NetCarrier, Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75571430 (T.T.A.B. Jun. 19, 2001)

6/19/01 Paper No. 12
RLS/kk
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re NetCarrier, Inc.
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Serial No. 75/571,430
_______
Sherry H. Flax of Saul Ewing, LLP for NetCarrier, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Simms, Cissel and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
NetCarrier, Inc. (applicant), a Pennsylvania
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark
NETCARRIER for providing telecommunications connections to
a global computer network; telecommunications services,
namely, personal communication services; electronic
transmission of messages and data.1 The Examining Attorney
1 Application Serial No. 75/571,430, filed October 30, 1998,
based upon allegations of use and use in commerce since May 25,
1996.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/571,430
2
has refused registration under Section 2(e)(1) of the Act,
15 U.S.C. §1052(e)(1), on the basis that applicant’s mark
merely describes the function and nature of applicant’s
services in that applicant is a carrier for the Internet.
The Examining Attorney has also refused to allow this
application under Section 2(f) of the Act, 15 USC §1052(f).
Applicant and the Examining Attorney have submitted briefs,
but no oral hearing was requested.2
We affirm.
It is the Examining Attorney’s position that
applicant’s mark consists of the combination of two generic
terms –- “Net” (the abbreviation for the Internet), and
“carrier,” a company that provides communications signals.
The combination forms another descriptive term, according
to the Examining Attorney, signifying an Internet carrier
or a “Net carrier.”
In support of her refusal, the Examining Attorney has
relied upon various articles retrieved from the Nexis
computer search system. The Examining Attorney contends
that these excerpts show that the term “Net carrier” is
2 In response to the first refusal, applicant disclaimed “NET and
CARRIER” apart from the mark. In her brief, the Examining
Attorney stated for the first time that an applicant may not
disclaim the entire mark. See TMEP § 1213.07. Accordingly, we
shall disregard this disclaimer.
Ser. No. 75/571,430
3
used by others to refer to providers of Internet access.
The following are examples from these excerpts:
She noted that the Internet Operators
Group, the coalition of Net carriers
and equipment providers charged with
coordinating coverage of hot spots
around the globe, logged just 10
problems in the 24-hour rollover
period, not all of them directly
related to Y2K…
San Jose Mercury News, January 3, 2000
* * * * * * * *
Platinum, a maker of infrastructure software,
had revenue of more than $900
million last year, while Net carrier
Broadcast.com took in $22.4 million.
InformationWeek, April 5, 1999
* * * * * * * *
HEADLINE: HAGGLE OVER PRICE WITH
NET CARRIERS
Computer Weekly, October 8, 1998
* * * * * * * *
In order to provide the ubiquity
that lies at the heart of the Internet, a
company that wants to carry Net traffic
has to connect with other Net carriers…
…There are about 40 public peering points
in the U.S. where dozens of Net carriers
set up their communications gear side by
side and share traffic…
Business Week, July 20, 1998
* * * * * * * *
We also consider mammoth Net
carrier MCI’s move into so-called “usage
billing,” a practice that could put an
end to flat payment as we know it and
could find companies charging higher
prices for “premium services.”
Electronic Engineering Times, November 4,
1996
Ser. No. 75/571,430
4
* * * * * * * *
Further, demand for its corporate
hosting services is growing. In its
just-ended second quarter, Uunet racked
up $54 million in Internet service
revenues, a 185 percent increase. The
Net carrier logged 1,011 new orders for
high-speed corporate Internet
connections.
InternetWeek, August 19, 1996
* * * * * * * *
…In general, readers said they are
counting on public net carriers for data
networking…
Network World, March 27, 1995
* * * * * * * *
HEADLINE: Direct control eludes
net carrier users
Computerworld, June 27, 1994
The Examining Attorney has also relied on dictionary
definitions of “Net” as an abbreviated form of “Internet,”
and that “carrier” is used to refer to “carrier service
provider,” which is a company offering telephone and data
communications between points in a state or in one or more
countries. Another definition defines “carrier” as:
A company which provides communications circuits.
Carriers are split into “private” and “common.”
A private carrier can refuse you service. A
“common” carrier can’t. Most of the carriers in
our industry –- your local phone company, AT&T,
MCI, US Sprint, etc. –- are common carriers.
Common carriers are regulated. Private carriers
are not.
Ser. No. 75/571,430
5
(Newton’s Telecom Dictionary, 1997). Because applicant is
a carrier which offers Internet access, the Examining
Attorney maintains that applicant’s mark NETCARRIER merely
describes applicant’s services.
With respect to applicant’s evidence of acquired
distinctiveness, more fully discussed below, the Examining
Attorney maintains that the evidence is insufficient
because of the high degree of descriptiveness in
applicant’s mark.
Applicant, on the other hand, while acknowledging that
it provides Internet access through several search engines,
maintains that its mark is a distinctive unitary one which
is not merely descriptive, but only suggestive of its
services. Applicant argues that the combination of words
it has chosen for its mark creates a valid mark that is
inherently distinctive, and that some thought or
imagination is needed in order to determine the nature of
applicant’s services. Further, applicant argues that, even
if its mark were considered descriptive of one aspect of
its services -– its telecommunications services -- it does
not describe all of applicant’s services. In this regard,
applicant states that it provides a variety of services
including Web site hosting, Web site development,
residential and commercial Internet connectivity, the
Ser. No. 75/571,430
6
electronic transmission of messages and news, weather and
sports information.
Applicant also maintains that, although the term
“carrier” is sometimes used to describe a
telecommunications service provider, the term is more
commonly used to describe a common carrier transportation
service. Therefore, according to applicant, the compound
term NETCARRIER is more likely to describe a container
constructed with a net material for transporting goods.
Applicant also notes the issuance of various third-party
registrations covering such marks as QUICKNET, COURIERNET,
WEBNET, and others. Applicant also claims ownership of the
mark NETCARRIER with design (Registration No. 2,391,550,
issued October 3, 2000).3
Alternatively, applicant argues that its mark has
acquired distinctiveness within the meaning of Section 2(f)
of the Act. Applicant’s supporting declaration asserts
that it has annually budgeted advertising expenditures of
$200,000 since 1996; that applicant has exclusively and
continuously used the mark since 1996; that applicant has
6,500 subscribers, and that a substantial number of its
3 According to Office records, that registration contains a
disclaimer of the term NET CARRIER.
Ser. No. 75/571,430
7
subscribers associate the mark with the services they
receive from applicant.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services, or if it conveys information
regarding a function, purpose or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). Whether or not a particular
term is merely descriptive is determined, not in the
abstract, but rather in relation to the goods or services
for which registration is sought, the context in which the
designation is being used, and the significance the
designation is likely to have to the average purchaser as
he or she encounters the goods or services bearing the
designation. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary that a term describe all of the
characteristics or features of the goods or services in
order to be merely descriptive; it is sufficient if it
describes only one of the qualities, properties or
attributes of the goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re
Pennzoil Products Co., 20 USPQ2d 1753, 1755 (TTAB 1991).
Upon careful consideration of this record and the
arguments of the attorneys, we find that this record
Ser. No. 75/571,430
8
adequately establishes that applicant’s mark is merely
descriptive of its services. The excerpts noted above use
the term “Net carrier” to describe Internet service
providers or Internet carriers. As noted above, because
descriptiveness must be considered in relation to the
relevant goods or services, the fact that the words which
make up applicant’s mark may be used in other contexts to
describe other goods or services is irrelevant. Nor need a
term describe all of an applicant’s goods or services in
order to be considered merely descriptive. Further, the
fact that there exist third-party registrations with the
word “NET” is not persuasive. Not only are these
registrations for different marks, but also each case must
be decided on its own facts. Thus, the third-party
registrations cannot be the basis for a conclusion that
“NET” in applicant’s mark is not part of a merely
descriptive term. We conclude that NETCARRIER is merely
descriptive of at least some of applicant’s services.
With respect to applicant’s claim of acquired
distinctiveness, we agree with the Examining Attorney that
applicant’s mark is highly descriptive and that, therefore,
more evidence is required to show that the term has become
recognized as an indication of origin for applicant’s
services. In re Bongrain International Corp., 894 F.2d
Ser. No. 75/571,430
9
1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Here, we have only
information that applicant has 6,500 customers and an
annual advertising budget of around $200,000, but no direct
evidence from purchasers that they recognize applicant’s
mark as an indication of origin. See In re Swift and
Company, 217 USPQ 87, 89 (TTAB 1982). Accordingly, because
applicant’s mark is highly descriptive, applicant has
failed to demonstrate that its mark has acquired
distinctiveness.
Decision: The refusal to register is affirmed.