MW Soft, Inc.

Trademark Trial and Appeal Board

Oct 20, 2003

No. 76177458 (T.T.A.B. Oct. 20, 2003)

Mailed: Paper No. 12
October 20, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MW Soft, Inc.
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Serial No. 76177458
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David L. Hoffman of Law Offices of David L. Hoffman for MW
Soft, Inc.
Darryl M. Spruill, Trademark Examining Attorney, Law Office
112 (Janice O'Lear, Managing Attorney).
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Before Simms, Cissel and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
MW Soft, Inc. seeks to register SEWERMAP on the
Principal Register as a mark for goods identified as
“computer program for use by engineers in the design,
planning and expansion of sanitary sewer collection
systems,” in International Class 9.1 Registration has been
1 Serial No. 76177458, filed December 4, 2000, based upon
applicant's allegation of its bona fide intent to use the mark in
commerce. Applicant, in a transmittal letter for a combined
filing of its notice of appeal and request for reconsideration,
stated that it had also included an amendment to allege use, but
the examining attorney, in denying the request for
This Opinion is Not
Citable as Precedent
of the TTAB
Ser. No. 76177458
2
refused under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1). The examining attorney's position is
that, when used on or in connection with applicant's goods,
SEWERMAP will be merely descriptive of them.
When the examining attorney made the refusal final,
applicant appealed and filed a request for reconsideration,
which the examining attorney denied. The appeal then was
resumed and has been fully briefed. Oral argument was not
requested.
The USPTO bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
To establish a prima facie case for refusal, the examining
attorney is not required to prove that the public would
actually view a proposed mark as descriptive, but must
establish a reasonable predicate for the refusal, based on
substantial evidence, i.e., more than a scintilla of
evidence. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d
1629 (Fed. Cir. 2003). When the examining attorney sets
forth a prima facie case, the applicant cannot simply
criticize the absence of additional evidence supporting the
reconsideration, reported that the amendment had not actually
been included among the papers filed by applicant.
Ser. No. 76177458
3
refusal, but must come forward with evidence supporting its
argument for registration. Gyulay, supra.
In this case, to meet the USPTO's burden, the
examining attorney has made of record article excerpts
retrieved from the NEXIS database and various web pages
retrieved from the Internet. In addition, in his brief,
the examining attorney asks that we take judicial notice of
dictionary definitions of “sewer” and “map.” Finally, the
examining attorney relies on material the applicant
submitted about its H2OMAP software.
2
The examining attorney argues that the terms SEWER and
MAP each are highly descriptive of applicant's goods and
that the combination of the two is just as descriptive
because the combination does not create any incongruity or
"a unitary mark with a separate, nondistinctive meaning."
According to the examining attorney, the specific
description conveyed by the combined terms, when considered
in conjunction with the goods, rather than in the abstract,
is of "the field, features, purpose, and/or subject matter
of the goods."
2 The examining attorney required the applicant to submit
literature detailing the nature of its SEWERMAP software and the
applicant, reporting that none existed, submitted the H2OMAP
information because that product, applicant explained, "is a
somewhat related computer program."
Ser. No. 76177458
4
Applicant essentially acknowledges that both SEWER and
MAP, each considered alone, would be descriptive of its
computer program for designing, planning and expanding
sanitary sewer collection systems. Applicant argues,
however, that the combination is not merely descriptive of
its product, contending that, "[w]hile it may seem like the
composite should have meaning, it really is only two
separately descriptive words. It does not make one
descriptive word or phrase." Brief, p. 3. Applicant
relies on a number of cases in which descriptive terms were
combined to make a non-descriptive composite. However,
applicant does not attempt to analogize the case at hand to
any one of the cases it references and does not explain the
basis for its assertion that even if SEWER and MAP are
individually descriptive, the combination SEWERMAP is only
suggestive.
Applicant also contests the probative value of the
evidence made of record by the examining attorney.
Specifically, applicant asserts that in the NEXIS excerpts
the words SEWER and MAP only appear "nearby" each other and
do not appear as either SEWERMAP or SEWER MAP. In
addition, the applicant argues that many of the NEXIS
excerpts and web pages are or appear to be after the filing
date of the application and therefore "are irrelevant."
Ser. No. 76177458
5
The question 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 or user of the
goods or services. See In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979) and In re Recovery, 196 USPQ 830, 831
(TTAB 1977).
A mark is considered merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately describes an ingredient,
quality, characteristic or feature thereof, or if it
directly conveys information regarding the nature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also Gyulay, supra. 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
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute or idea about them.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
It has long been settled that the question whether a
term is descriptive or not is determined based on what the
Ser. No. 76177458
6
evidence reveals at the time when the issue of
registrability is under consideration, i.e., the time when
the application is being considered in the USPTO. See In
re Thunderbird Products Corporation, 406 F.2d 1389, 160
USPQ 730 (CCPA 1969) ("the board properly considered the
literature references published after the filing of the
application and correctly decided" term was descriptive and
not registrable); see also, In re Samuel Moore & Company,
195 USPQ 237 (TTAB 1977). Accordingly, applicant is
incorrect in arguing that much of the evidence proffered by
the examining attorney is irrelevant because it postdates
applicant's filing date. We have considered all the
evidence.
We agree with the applicant that none of the NEXIS
excerpts show use of SEWERMAP or even SEWER MAP. But many
of the excerpts show that sewer systems are "mapped" and
one excerpt (dated, we note, prior to applicant's filing
date) refers to the resulting product as a "sewer system
map" Worcester Telegram & Gazette, August 10, 2000. We
cannot conceive of a more apt description, and applicant
has not suggested one, for the resulting product when
engineers map a sewer system. SEWER MAP, or even SEWERMAP,
would be readily perceived as a shorthand reference to a
"sewer system map." See Abcor, supra, wherein GASBADGE was
Ser. No. 76177458
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held descriptive for the Walden Gas Monitoring Badge used
to determine an individual's exposure to pollutants.
We must assess the likely perception of SEWERMAP from
the point of view of the average purchaser or user of
applicant's computer program, i.e., the engineers engaged
in "the design, planning and expansion of sanitary sewer
collection systems." Applicant's promotional brochure for
its H2OMAP program, stated by applicant to be similar to its
SEWERMAP program, discusses use of "GIS" mapping and
modeling functions. Likewise, many of the NEXIS excerpts
refer to the GIS system being used in conjunction with
mapping of sewers. We have no doubt that municipal
engineers working for water and sewer authorities, who
would have actual need for working with sewer system maps,
and who apparently would be familiar with GIS mapping and
modeling, would perceive SEWERMAP to immediately describe
the end result of using applicant's computer program.
Frankly, given the existence of terms such as "road
map" and "topographic map,"3 we believe that even an average
individual would readily perceive SEWERMAP, when used on or
in conjunction with applicant's computer program, as
3 We take judicial notice of the presence of entries for both
"road map" and "topographic map" in The Random House Dictionary
of the English Language (2d ed. 1987).
Ser. No. 76177458
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indicating that the software is for producing sewer system
maps. In this regard, we note that the NEXIS excerpts and
one of the Internet web pages illustrate discussion of
sewer mapping by municipalities in publications of general
circulation, not specialized trade publications that only
engineers would be exposed to. Nonetheless, the examining
attorney need not establish unequivocally that individual
members of the general public would find SEWERMAP
descriptive. It is sufficient that engineers would find it
descriptive.
Applicant has criticized the evidence proffered by the
examining attorney, but it has not proffered any evidence
of its own to show why engineers would have to cogitate or
engage in mental reasoning to determine the meaning of
SEWERMAP when used on or in conjunction with applicant's
computer program. Nor has applicant articulated any
argument why the compound term SEWERMAP would be viewed as
incongruous, ambiguous or otherwise distinctive. See In re
A La Vieille Russie Inc., 60 USPQ2d 1895, 1899 (TTAB 2001)
("the words 'Russian art' are not lent any additional
meaning simply by virtue of their having been combined into
the compound term RUSSIANART. Applicant has suggested no
such other or additional meaning that results from the
compression of the two words into one"). Accordingly, we
Ser. No. 76177458
9
find applicant has not rebutted the prima facie case
established by the examining attorney.
Decision: The refusal of registration under Section
2(e)(1) of the Lanham Act is affirmed.