Kenneth H. Allman II

Trademark Trial and Appeal Board

Oct 3, 2001

No. 75762516 (T.T.A.B. Oct. 3, 2001)

10/3/01

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kenneth H. Allman II
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Serial No. 75/762,516
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Andrew B. Mayfield for Kenneth H. Allman II.

Jessie W. Billings, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Hanak, Chapman and Bottorff, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Kenneth H. Allman II (applicant) seeks to register
HOSPITALLINK for “computer services, namely, providing a
searchable index of hospitals and other medical care
facilities available on a global computer network.” The
application was filed on July 28, 1999 with a claimed
first use date of January 26, 1998.
The Examining Attorney has refused registration on
the basis that applicant’s mark, as applied to
applicant’s services, is merely descriptive pursuant to
Section 2(e)(1) of the Trademark Act.
When the refusal to register was made final,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
applicant

Ser. No. 75/762,516

appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of the relevant goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed.
Cir. 1986). Whether a mark is merely descriptive is
determined in relation to the goods or services for which
registration is sought, not in the abstract. In re Omaha
National Corp., 819 D.2d 1117, 2 USPQ 1859, 1861 (Fed.
Cir. 1987); In re Abcor Development Corp., 588 F. 2d 811,
200 USPQ 215, 218 (CCPA 1978).
The Examining Attorney and applicant disagree as to
what applicant’s actual services are. The Examining
Attorney contends that “the applicant’s web site provides
links to hospitals. The site provides the names of
hospitals that the user can then click on and be linked
to the hospital.” (Examining Attorney’s brief page 2).
On the other hand, applicant contends that its services
consist
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Ser. No. 75/762,516

simply of “an Internet site that provides information on
hospitals.” (Applicant’s brief page 2).
In reviewing applicant’s specimen of use, it is not
clear as to exactly what applicant’s actual services are.
Applicant’s specimen contains the following statement:
“HOSPITALLINK makes it easy for you to locate the web
site of almost any hospital you choose in a matter of
seconds with one click and a scroll of a computer mouse.”
However, applicant’s specimen of use does not indicate
that having located the web site of the desired hospital,
the user of applicant’s services could then employ said
services to directly link to that web site. If the user
of applicant’s actual services could use applicant’s web
site to directly link up with the web site of the desired
hospital, then we would find that applicant’s mark is
indeed merely descriptive of applicant’s actual services.
On the other hand, if applicant’s web site merely
provides information on hospitals, and the user of
applicant’s services then had to log off of applicant’s
web site and log on to the web site of the desired
hospital, we would find that applicant’s mark was not
merely descriptive of applicant’s actual services.
However, the foregoing dispute between the Examining
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Ser. No. 75/762,516

Attorney and applicant regarding applicant’s actual
services is essentially irrelevant. As previously noted,
the mere descriptiveness of a mark is determined in
relation to the goods or services as described in the
application. Our primary reviewing Court has emphasized
that “the authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services]
set forth in the application regardless of what the
record may reveal as to the [actual] nature of an
applicant’s goods [or services].” Octocom Systems, Inc.
v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
As previously noted, the services for which
applicant seeks to register HOSPITALLINK are “computer
services, namely, creating and providing a searchable
index of hospitals and other medical care facilities
available on a global computer network.” In other words,
applicant is merely seeking to register HOSPITALLINK for
a computer index of hospitals and other medical care
facilities. Applicant is not seeking to register
HOSPITALLINK for services which would allow the user to
directly link with a particular hospital’s web site.
While we have little doubt that a user
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Ser. No. 75/762,516

of applicant’s applied for services, upon finding the web
site of the desired hospital in applicant’s searchable
index, would then most likely link up with that web site
on his own, the fact remains that applicant’s mark
HOSPITALLINK does not directly convey immediate
information regarding applicant’s applied for services.
Applicant’s applied for services simply do not feature
any links or connections between the users of applicant’s
services and hospitals or other medical care facilities.
Of course, it need hardly be said that to the extent that
there are any doubts on the issue of mere
descriptiveness, it is the practice of this Board to
resolve such doubts in applicant’s favor. In re Gourmet
Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.

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