IP Carrier Consulting Group

Trademark Trial and Appeal Board

Sep 21, 2007

No. 78542702 (T.T.A.B. Sep. 21, 2007)

Mailed:
September 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IP Carrier Consulting Group
________

Serial No. 78542702
_______

Louis M. Heidelberger, Esq. of Reed Smith LLP for IP
Carrier Consulting Group.

Sung In, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

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

Opinion by Bergsman, Administrative Trademark Judge:

IP Carrier Consulting Group filed an intent-to-use
application for the mark ipTUNES (standard character
format) for services ultimately identified as
“telecommunications access services, namely subscription-
based access services featuring a device that allows the
user to access high speed transmission of audio and data
via a global computer network, computers and wireless
devices.”1

1 Application Serial No. 78542702, filed January 5, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78542702
2
Registration has been refused on the ground that the
mark is merely descriptive pursuant to Section 2(e)(1) of
the Lanham Act, 15 U.S.C. §1052(e)(1). The examining
attorney contends that ipTUNES “is understood to mean an
Internet Protocol-based means of selecting or playing music
and videos, and this immediately describes applicant’s
telecommunications access services featuring a device for
high-speed transmission of audio and data via a global
computer network.” (Examining Attorney Brief, p. 3).
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the services with which it
is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the services for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is
whether someone who knows what the services are will
understand the mark to convey information about the
services. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
Serial No. 78542702
3
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp., 226 UPSQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety. As
argued by applicant, common words may be descriptive when
standing alone, but when used together in a composite mark,
they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989). However, if each component
retains its descriptive significance in relation to the
services, without the composite term creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d
1314, 1317-1318 (TTAB 2002).
Serial No. 78542702
4
The examining attorney submitted the following
evidence to show that “IP” means “Internet Protocol” or
“Internet Provider”:2
1. Definition of “IP” from the Acronym Finder at
www.acronymfinder.com identifying one of the
meanings of “IP” as “Internet Provider” and one
as “Internetworking Protocol”;

2. Definitions of IP as an abbreviation or acronym
for “Internet Protocol” from multiple sources.3

3. Excerpts from newspaper articles referencing
providers of Internet access as “Internet
Providers”;

4. Definition of “Internet Service Provider” as
“Companies that provide Internet access, email,
etc. for fee. Also called: Point-of-Presence,
ISP, and Internet Providers” from
www.bitpipe.com, an IT information website that
provides a dictionary of terms;

5. The “About Us” webpage from applicant’s website
(ipcarrier.com) discussing applicant’s “forward
looking concept for marketing advanced
technologies and IP-based services to ordinary
consumers. . . In this online, always-on, soon to
be speech-enabled, personalized world of
communications, the most valuable brand is the
literal word itself, preceded with your, my, and
IP.”; and,

6. The website for the Miami Internet Telephony
Conference & Expo, February 22-25, 2005

2 Applicant has acknowledged that IP is an acronym for Internet
Protocol. (December 9, 2005 Response).
3 Bartleby.com derived from The American Heritage Dictionary of
the English Language (4th ed. 2000); Encarta
(http://encarta.msn.com); Microsoft Computer Dictionary, p. 287
(5th ed. 2002); Newton’s Telecom Dictionary, p. 450 (2005); The
Computer Glossary, p. 201 (9th ed. 2001); The Dictionary of
Computer and Internet Terms, p. 270 (9th ed. 2006).
Serial No. 78542702
5
(tmcnet.com), with featured sessions on VoIP.4
Applicant’s Managing Partner made a presentation
entitled “Selling Services: The IP Carrier Agent
Opportunity” including a discussion regarding
“the pace of innovation unfolding in VoIP
services.”

The Examining Attorney submitted dictionary
definitions to prove that “tunes” means “music” or
“songs.”5
The Examining Attorney submitted the following
evidence to demonstrate that Internet providers transmit
music through the Internet:
1. A 2003 press release posted on the Real website
(realnetworks.com) announcing that “Comcast, the
nation’s leading broadband Internet provider, and
RealNetworks, the global leader in digital media
services and software,” reached an agreement
allowing Comcast to transmit RealNetworks’ music
library to its subscribers; and,

2. A January 22, 2003 article posted on the
NewScientist.com website, “The World’s No. 1
Science & Technology News Service,” regarding a
court order requiring Verizon, an internet
service provider, to reveal the identity of a

4 VoIP is an acronym for “Voice over Internet Protocol” which is
“a protocol for transmitting the human voice in digital form over
the Internet or other networks as an audio stream, instead of
using traditional telephone lines.” The American Heritage
Science Dictionary (2002) accessed through www.dictionary.com.
The Board may take judicial notice of an online dictionary which
is the electronic equivalent of a print publication that
applicant may easily verify. In re Red Bull GmbH, 78 UPSQ 1375,
1378 (TTAB 2006). See also the entries from SearchVoIP.com,
”The Web’s best VoIP information resource for enterprise IT
professionals.”
5 The American Heritage Dictionary of the English Language,
supra; Encarta, supra; Merriam-Webster Online (www.m-w.com).
Applicant concedes that “tunes” is commonly understood as meaning
music, but does not agree that tunes is descriptive.
(Applicant’s Brief, p. 5).
Serial No. 78542702
6
user accused of illegally downloading hundreds of
copyrighted songs. The author reports that “many
thousands of individuals” are suspected of
copyright infringement through peer-to-peer file
sharing networks.6

We start our analysis of the registrability of ipTUNES
by inquiring whether ipTUNES describes a function or
purpose of “telecommunications access services, namely
subscription-based access services featuring a device that
allows the user to access high speed transmission of audio
and data via a global computer network, computers and
wireless devices,” not whether we can guess what the
services are by looking at the mark.
The evidence shows that “ip” is an abbreviation or
acronym for “Internet Provider” or “Internet Protocol,” and
that when used as a prefix for a mark, “ip” means through
the Internet. The evidence regarding VoIP (Voice over
Internet Protocol) shows that “ip” is understood to mean
through the Internet (i.e., voice communications through
the Internet). In addition, applicant’s website refers to
applicant’s concept for marketing IP-based services and how
“the most valuable brand is the literal word itself,
preceded with your, my, and IP.” In this instance, the

6 We are not considering this information for the truth of the
matter asserted in the article, only that the author reported it
as such and, therefore, as evidence of what readers may perceive.
Serial No. 78542702
7
“literal word” is “tunes” preceded by “ip.” “Tunes” is a
slang expression for “songs” or “music.” When combined,
ipTUNES means music or songs through the Internet.
Applicant’s services comprise providing high-speed
transmission of audio and data through the Internet. Both
components of the mark, “ip” and “tunes,” retain their
descriptive meaning when combined and used in connection
with the high-speed transmission of audio and data. The
combination of “ip” and “tunes” does not create a new term
with an incongruous meaning. Thus, the mark ipTUNES
directly conveys to consumers that applicant’s services
involve the transmission of music (i.e., audio and data)
through the Internet.
In responding to the descriptiveness refusals
applicant submitted the Wikipedia entry for “Internet
Service Provider” to show that the most common abbreviation
for “Internet Provider” is “ISP.”7 “Internet Service
Provider” is defined as follows:

7 “[T]he Board will consider evidence from Wikipedia so long as
the non-offering party has an opportunity to rebut that evidence
by submitting other evidence that may call into question the
accuracy of the particular Wikipedia information. Our
consideration of Wikipedia evidence is with the recognition of
the limitations inherent with Wikipedia (e.g., that anyone can
edit it and submit intentionally false or erroneous information).
In re IP Carrier Consulting Group, ___ USPQ2d ___ (Serial Nos.
78542726 and 78542734, TTAB June 18, 2007). In this case, the
Examining Attorney has had an opportunity to rebut the evidence.

Serial No. 78542702
8
A company or organization that provides
access to the Internet through its
servers, usually for a fee.8

Applicant argues that ipTUNES is not descriptive
because it takes a “significant leap of imagination” to
connect ipTUNES with the high-speed transmission of audio
and data. Applicant reasons that the most common acronym
for “Internet Provider” is “ISP,” not “IP.” Therefore,
consumers encountering the mark ipTUNES would have to
translate “ip” to “ISP,” and “the presumed association
between ‘ip’ and Internet provider would at least require a
step of imagination.” (Applicant’s Brief, p. 3-5). The
problem with applicant’s analysis is that it starts with
the term “Internet Provider,” a term that is not a
component of the mark, and asks what is the most common
acronym for “Internet Provider.” An analysis of the mark
should start with the mark at issue (ipTUNES) and inquire
whether that term describes the high-speed transmission of
audio and data, not the inquiry whether “ip” is the most
common acronym for “Internet Provider.” The evidence shows
that “IP” means “Internet Provider” or “Internet Protocol.”
In either case, ipTUNES directly engenders the commercial

8 American Heritage Dictionary of Cultural Literacy (3rd ed.
2005).
Serial No. 78542702
9
impression or meaning of music transmitted through the
Internet. See In re IP Carrier Consulting Group, supra.
In view of the foregoing, we find that ipTUNES is
merely descriptive of the purpose or function of
applicant’s services for transmitting audio and data
through the Internet.
Decision: The refusal to register is affirmed.