Michael Krasik

Trademark Trial and Appeal Board

Sep 11, 2009

No. 77381912 (T.T.A.B. Sep. 11, 2009)

Mailed: September 11, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Krasik
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Serial No. 77381912
_______

Michael J. Folise of Black, Lowe & Graham PLLC for Michael
Krasik.

Sani Khouri, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Taylor, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Michael Krasik has filed an application to register
the mark INVENTION REGISTRY, in standard character format,
on the Principal Register for goods ultimately identified
as “Electronic storage of archival documents related to
invention conception dates, for others” in Class 35.1 In
response to a conditional request by the examining

1 Serial No. 77381912, filed January 28, 2008, and alleging a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77381912
2
attorney, applicant disclaimed the exclusive right to use
“Registry.”2
The trademark examining attorney finally refused
registration on the ground that applicant’s mark INVENTION
REGISTRY is merely descriptive of applicant’s services
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).
Applicant appealed and both applicant and the
examining attorney filed briefs. We affirm the refusal to
register.
A term is merely descriptive of goods, and therefore
unregistrable under Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods. 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).
Whether a particular term is merely descriptive is
determined not in the abstract, but in relation to the
goods for which registration is sought, the context in

2 The examining attorney states in his brief that the disclaimer
was “requested” only if applicant were to file an acceptable
allegation of use and an amendment to seek registration on the
Supplemental Register. Although applicant did neither, he
submitted a disclaimer of the term “registry,” which has been
accepted and made of record. Applicant has not withdrawn the
disclaimer.
Ser No. 77381912
3
which it is being used or is intended to be used on or in
connection with those goods, and the possible significance
that the term would have to the average purchaser of the
goods because of the manner of its use or intended use. In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)
(“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 and services are will understand the mark to convey
information about them.”).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers).
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 Abcor Development Corp., 200
Ser No. 77381912
4
USPQ at 218, and In re Mayer-Beaton Corp., 223 USPQ 1347,
1349 (TTAB 1984).
The examining attorney maintains that applicant’s
proposed mark “describes the purpose of the services, which
is to act as a ‘registry’ for ‘invention’ conception
dates.” (Br. p. 3). The examining attorney particularly
argues that INVENTION REGISTRY is merely descriptive of
applicant’s electronic storage of archival documents
related to invention conception dates, for others because
“both the individual components and the composite result
are descriptive of appellant’s [applicant] services and do
not create a unique, incongruous or non-descriptive meaning
in relation to the services.” (Br. p. 6).
In support of the refusal, the examining attorney
submitted the following definitions of “registry” and
“register.” Registry is defined, in relevant part, as:
noun: an official record of names or events
or transactions.3

Register is defined, in relevant part, as:

1: a written record containing regular
entries of items or details
2a: a book or system of public records.4

3 OneLook Dictionary Search, Quick definitions,
www.onelook.com/?w=registry&/s=a.
4 Merriam-Webster Online Dictionary 2008.
Ser No. 77381912
5
Additionally, we take judicial notice of the following
definition of “registry”:
noun: 3. an official record or list; register.5
Finally, the examining attorney submitted an excerpt
from the www.bioinfo.com website.6 The excerpt from this
website is a story/article discussing federal technology
transfer issues (i.e., federally owned inventions and
licenses) and the ability of the government to track and
develop the inventions. The article indicates that PHS/NIH
has a mandate to transfer technology to improve public
health and in so doing, “one might expect there to be an
information center, public document room or an invention
registry database maintained by the National Library of
Medicine.” (Emphasis added).

5 Webster’s New World College Dictionary (2005). Retrieved at
www.yourdictionary.com/registry on September 4, 2009.
6 The examining attorney also submitted excerpts from several
websites, including www.mega.nu, and findarticles.com, retrieved
from a search of the Google search engine for the term “invention
registry” and an excerpt from the website www.unimarkip.com,
which he contends show that “an ‘invention registry’ appears to
be an archive of information related to inventions.” (Br. p 5).
We find these submissions have little, if any, probative value
in assessing the U.S. consuming public’s perception of the term
INVENTION REGISTRY as describing applicant’s electronic storage
of archival documents related to invention conception dates for
others. Specifically, the excerpt from www.mega.nu states that
the information is “grossly obsolete” and is to be replaced, the
excerpt from www.unimarkip.com refers to the Trademark and
Intellectual Property Office of the Republic of Yemen and the
excerpt from findarticles.com is taken from the Vietnam
Investment Review.
Ser No. 77381912
6
Applicant, in urging reversal of the refusal,
maintains that his mark is not merely descriptive of his
services, but instead, is suggestive of them. Applicant
particularly argues:
The services (as amended) associated with the
proposed mark applied for are clearly not for
patent registrations or invention
registrations. Rather, the proposed services
as amended are directed to maintenance of an
electronic document repository and services
associated therewith…. No “registration” … of
anything is accomplished.

(Br. p. 2). Applicant further argues that “the combination
of ‘INVENTION’ and ‘REGISTRY’ suggests services which
potentially enhance an inventor’s rights in certain limited
situations. The combination in no way describes an actual
or virtual register for inventions ….” (Br. p. 6).
Applicant also, on the one hand, contends that the
“Section 2(e)(1) refusal is traversed, particularly in
light of the amended recitation of services because an
electronic repository of documents related to dates of
conception is clearly not an ‘invention registry’ as that
term in commonly understood and as shown by the Examining
Attorney’s evidence of record.” (Br. p. 2) On the other
hand, applicant maintains that the evidence “fails to
clearly show that there is any such thing as an ‘invention
registry.’”
Ser No. 77381912
7
As stated, in order to be found descriptive, the mark
need only convey an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods, not the common class name. See In re Gyulay,
3 USPQ 1009.
We find that this record establishes that the
designation INVENTION REGISTRY, as a whole, is descriptive
of the identified services. When INVENTION REGISTRY is
viewed in connection with the services listed in the
application, there is nothing in the mark which is
incongruous, nor is there anything which would require the
gathering of further information, in order for the merely
descriptive significance thereof to be readily apparent to
prospective purchasers of the goods. See, for example, In
re Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ
215 (CCPA) (Rich, J., concurring) [GASBADGE described as a
shortening of the name “gas monitoring badge”]; and Cummins
Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892,
149 USPQ 559 (CCPA 1966) [TUBODIESEL held generically
descriptive of engines having exhaust driven turbine super-
chargers]. That is, contrary to applicant’s contention,
the combination of the words “invention” and “registry”
fails to create a new and distinct commercial impression.
Applicant’s own use of the term “invention” in the
Ser No. 77381912
8
identification of goods shows that INVENTION directly
describes an attribute of applicant’s services.
Additionally, as previously indicated, the term “registry”
means “an official record of names or events or
transactions” and the term “register,” a variation of the
term “registry,” means “a written record” The term
“registry” thus clearly describes the purpose of
applicant’s electronic storage of archival documents, i.e.,
to provide a written record of invention conception dates.
We note, too, that applicant confirms in his brief that
“Applicant’s services relate to an electronic repository
for archival documents related to dates of conceptions for
inventions.” (Br. p. 3).7
Lastly, applicant has pointed to numerous decisions
where marks were found suggestive even though they included
terms that otherwise conveyed some degree of information
about the goods identified thereunder (e.g., BROWN-IN-BAG
not descriptive of bags used in browning meats, PLUS 30 not
descriptive of creams for women over thirty, CHARRED KEG
not descriptive of whiskey, IMPACT not descriptive of

7 Indeed, applicant has disclaimed the term “registry,” even
though the examining attorney clearly indicated in her Office
Action that such a disclaimer was not required in the absence of
an amendment to seek registration on the Supplemental Register.

Ser No. 77381912
9
carbonless transfer paper, CURV not descriptive of
permanent curling wave solution and SOFT SMOKE not
descriptive of smoking tobacco). We note, however, that
the determination of registrability of a mark in another
case is of little value because each case must be
determined on its own facts. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). We are
constrained to decide this appeal on the record before us.
For the reasons discussed, we conclude that when
applied to applicant’s services, the designation INVENTION
REGISTRY immediately describes, without any kind of mental
reasoning, the purpose of applicant’s electronic storage of
archival documents related to invention conception dates,
for others is as an electronic registry, i.e., record, of
invention conception dates.

Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.