PAAT, Inc.

Trademark Trial and Appeal Board

Apr 21, 2020

87750682 (T.T.A.B. Apr. 21, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: April 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re PAAT, Inc.
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Serial No. 87750682

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Timothy L. Capria of Bradley Arant Boult Cummings LLP,
for PAAT, Inc.

Michael Thomas Ebaugh, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
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Before Ritchie, Shaw, and Johnson,
Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:
PAAT, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
PURCHASE ACTIVATED APPAREL TECHNOLOGIES and design, as shown below,
for “Application service provider (ASP) featuring software for use customizing,
designing, and ordering goods, particularly clothing and accessories; Development,
updating and maintenance of software and database systems; Platform as a service
(PAAS) featuring computer software platforms for customizing, designing, and
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ordering goods, particularly clothing and accessories; Software as a service (SAAS)
services featuring software for customizing, designing, and ordering goods,
particularly clothing and accessories,” in International Class 421:

The application contains the following description of the mark: The mark consists
of stylized literal element “PAAT” centered over the literal element “PURCHASE
ACTIVATED APPAREL TECHNOLOGIES.” Color is not claimed as a feature of the
mark.
The Trademark Examining Attorney required a disclaimer of the phrase
“PURCHASE ACTIVATED APPAREL TECHNOLOGIES” under Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a), on the ground that the phrase is merely
descriptive of a feature, purpose, and/or intended use of Applicant’s services under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
When the requirement was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, the appeal was
resumed. The appeal is fully briefed. For the reasons discussed below, the disclaimer
requirement is affirmed.

1 Serial No. 87750682 was filed on January 10, 2018 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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I. Disclaimer Requirement
A phrase (or term) must be disclaimed apart from the mark as shown if it is
deemed to be merely descriptive of the subject goods or services. See In re Grass
GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006); TRADEMARK MANUAL OF EXAMINING
PROCEDURE § 1213.08(b) (TMEP) (Oct. 2018). A phrase is deemed to be merely
descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature, function,
purpose, or use of the goods or services. See In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). Whether a phrase 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 phrase would have to
the average purchaser of the goods or services because of the manner of its use. That
a phrase may have other meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
II. The Arguments and Evidentiary Issues
The Examining Attorney argues that the phrase “PURCHASE ACTIVATED
APPAREL TECHNOLOGIES” is merely descriptive of Applicant’s services. In
support, the Examining Attorney submits evidence of the following dictionary
definitions:
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Purchase: The act or instance of buying;2
Activate: To set in motion; make active or more active;3
Apparel: Clothing, especially outer garments; attire;4 and
Technology: The scientific method and material used to achieve a commercial or
industrial objective.5
The Examining Attorney also submits excerpts from Applicant’s web site that
describe “purchase activated apparel,”6 as well as links to Internet articles that
describe the “purchase activated” process, and specifically, “purchase activated
apparel.”7 Thus, according to the Examining Attorney,
In this context, it is apparent that changes to a consumer’s
apparel design, production, and manufacturing processes
are activated based upon data derived from end user
purchases, which data is or will be stored and/or analyzed
as part of applicant’s technological services in order to
deliver on applicant’s promise to improve profitability and
efficiency, and to allow for the personalization of output by
the applicant’s consumers.8

2 9 TTABVUE 10, citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://www.ahdictionary.com/word/search.html?q=purchase.
3 9 TTABVUE 11, citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://www.ahdictionary.com/word/search.html?q=activate
4 9 TTABVUE 9, citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://www.ahdictionary.com/word/search.html?q=apparel
5 9 TTABVUE 8, citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE,
https://www.ahdictionary.com/word/search.html?q=technology
6 9 TTABVUE 11, citing June 25, 2019 Denial of Reconsideration Letter, TSDR pp. 1-6
(attaching evidence from: http://paat.purchaseactivatedapparel.com/about-paat/).
7 9 TTABVUE 11-13, 19.
8 5 TTABVUE 6.
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In the Request for Reconsideration, Applicant conceded that its services are
“technological services.”9
Applicant argues that the phrase PURCHASE ACTIVATED APPAREL
TECHNOLOGIES is not merely descriptive because it “does not, on its own,
immediately describe with any particularity the type of services Applicant offers.”10
Specifically, Applicant asserts that consumers must use “multi-stage reasoning” and
employ “imagination, thought and perception” to reach a conclusion as to the nature
and variety of all the technological services that may be offered under the phrase,11
and therefore, at a minimum, PURCHASE ACTIVATED APPAREL
TECHNOLOGIES is suggestive of the claimed services.12
Applicant further argues that the Examining Attorney “incorrectly abstracted the
individual terms comprising the phrase ‘PURCHASE ACTIVATED APPAREL
TECHNOLOGIES’ to such a level that the [Examining Attorney’s] purported
meaning of the phrase . . . would encompass any goods or services involving the
purchase of apparel. . . . [T]he test for descriptiveness does not permit such
abstraction.”13
Finally, Applicant argues that “the intent of the disclaimer requirement –
ensuring that all merchants can effectively describe the services they offer – is not

9 9 TTABVUE 7.
10 7 TTABVUE 7.
11 7 TTABVUE 7-9.
12 7 TTABVUE 7, 9.
13 7 TTABVUE 10-11.
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advanced in this instance” because the Examining Attorney offered no evidence that
other providers of software-based services actually use, or need to use, the phrase
PURCHASE ACTIVATED APPAREL TECHNOLOGIES in association with the
claimed services.14 In support, Applicant submitted with its brief the results of a
TESS search of the term “purchase activated.”15 In turn, the Examining Attorney
objects to any consideration of this argument by the Board because the evidence was
submitted for the first time on appeal, and as a result, is untimely.16 We agree, and
decline to consider the untimely evidence or the unsupported argument. Trademark
Rule 2.142(d), 37 C.F.R. §2.142(d); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) §§ 1203.02(e), 1207.01 (2019); TMEP §710.01(c) (Oct. 2018); see
In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). Furthermore, the
fact that an applicant may be the first and only user of a term or phrase does not
justify registration as a mark if it is nevertheless merely descriptive of the applied-
for goods or services. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (holding that trademark protection does
not provide for “a complete monopoly on use of a descriptive term simply by grabbing
it first.” (citation omitted)); see also In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); TMEP § 1209.03(c) (Oct. 2018).

14 7 TTABVUE 12-14; 10 TTABVUE 7-9.
15 7 TTABVUE 16-17.
16 9 TTABVUE 4-5.
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III. Analysis and Conclusion
We hold that the phrase PURCHASE ACTIVATED APPAREL TECHNOLOGIES
immediately describes, with particularity, at least a characteristic, feature, function,
purpose or use of the claimed services, which are stated as follows: “Application
service provider (ASP) featuring software for use customizing, designing, and
ordering goods, particularly clothing and accessories; Development, updating and
maintenance of software and database systems; Platform as a service (PAAS)
featuring computer software platforms for customizing, designing, and ordering
goods, particularly clothing and accessories; Software as a service (SAAS) services
featuring software for customizing, designing, and ordering goods, particularly
clothing and accessories.” See Chamber of Commerce, 102 USPQ2d at 1219 (citation
omitted); see also Abcor Dev. Corp., 200 USPQ at 217-18. While doubt is resolved for
Applicant, we have no doubt that consumers would require no imagination, thought,
or perception to arrive at this conclusion. See DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012). We note that
Applicant offered an assortment of arguments explaining the possible meanings of
“PURCHASE ACTIVATED APPAREL TECHNOLOGIES,” but the fact that a phrase
may have other meanings in different contexts is not controlling here. Bright-Crest,
Ltd., 204 USPQ at 593. Therefore, we find that the phrase is merely descriptive of
the identified services, and we affirm the refusal to register Applicant’s entire mark
absent a disclaimer.
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Decision: The refusal to register Applicant’s mark based on the requirement,
made under Trademark Act Section 6(a), for a disclaimer of PURCHASE
ACTIVATED APPAREL TECHNOLOGIES, is affirmed. However, if Applicant
submits the required disclaimer of PURCHASE ACTIVATED APPAREL
TECHNOLOGIES to the Board within thirty days, this decision will be set aside.17
See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

17 A properly worded disclaimer reads: “No claim is made to the exclusive right to use
PURCHASE ACTIVATED APPAREL TECHNOLOGIES apart from the mark as shown.”
See TMEP § 1213.08(a)(i) (October 2018).