Pitsco, Inc.

Trademark Trial and Appeal Board

Jun 2, 2000

No. 75332218 (T.T.A.B. Jun. 2, 2000)

Paper No. 10
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/2/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pitsco, Inc.
________
Serial No. 75/332,218
_______
Thomas H. Van Hoozer of Hovey, Williams, Timmons & Collins
for Pitsco, Inc.
Steven M. Perez, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Simms, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Pitsco, Inc. has filed an application to register the
mark INVENTIONEERING for an “educational product, namely, a
kit consisting of components including rubber bands, paper
clips, wheels, balloons, gears, and straws and instructions
Ser No. 75/332,218
2
for the design and construction of structural and
mechanical models.”1
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act. Applicant and the Examining Attorney
have filed briefs, but no oral hearing was requested.
The Examining Attorney maintains that the proposed
mark INVENTIONEERING describes or immediately conveys
information regarding the purpose or use of applicant’s
goods. Although acknowledging that “inventioneering” is
not a term found in the dictionary, the Examining Attorney
argues that the term, even if coined as applicant contends,
is one which has had considerable use beyond that of
applicant. He has introduced evidence both from the Nexis
database and from Internet web pages as support for his
assertion that the term is used by others to describe a
children’s educational area or activity used to develop
problem-solving skills.
Before turning to applicant’s substantive arguments
with respect to this refusal, we must consider the
objections which applicant has raised to the Internet
printouts which the Examining Attorney made of record at

1 Serial No. 75/332,218, filed July 29, 1997, based on an
allegation of a bona fide intent to use the mark in commerce.
Ser No. 75/332,218
3
the time of making the refusal final. Applicant contends
that under TMEP § 1106.01 the Examining Attorney’s action
should have been complete as of the first action and that
the “delinquent” reliance by the Examining Attorney upon
the Internet printouts in the second (and final) action
placed applicant at a disadvantage, since applicant had no
opportunity to respond thereto. Applicant further objects
to the Internet printouts on the bases that there is no
provision in TMEP § 1106.07(a) for reliance by the Office
on evidence obtained from the Internet and that the
Examining Attorney failed to indicate the full parameters
of the search used to obtain this evidence.
In the first place, the requirement under TMEP §
1106.01 is that the first action be complete as to grounds
for refusal, requirements, and objections. If additional
grounds or requirements are added in the second action, the
action cannot be made final, because the applicant has not
had an opportunity to respond to the newly raised grounds
or requirements. See TMEP § 1105.04. The mere
supplementation of a previously raised ground of refusal
with additional evidence is not a newly raised ground and
applicant is not entitled to an additional opportunity to
respond thereto. The only pertinent requirement is that
Ser No. 75/332,218
4
the record be complete prior to appeal. This requirement
was satisfied by the Examining Attorney.2
Insofar as reliance upon Internet evidence per se is
concerned, the Board has previously determined that
information obtained from the Internet may be admissible,
so long as applicant has the opportunity to check the
reliability of the evidence. See In re Total Quality
Group, Inc., 51 USPQ2d 1474 (TTAB 1999). Cf. Raccioppi v.
Apogee Inc., 47 USPQ2d 1368 (TTAB 1998)[Internet evidence
admissible for purposes of summary judgment if properly
introduced]. Here the Internet printouts which were made
of record as part of the final action include the Internet
addresses at which the Examining Attorney accessed the
information and at which applicant could review the
information. We find no need for any greater
identification of the source of the Internet information.
If applicant deemed that rebuttal was necessary, applicant
could have filed a request for reconsideration with
additional evidence.
Looking now to applicant’s substantive arguments, we
find applicant’s major contention to be that its proposed

2 In its reply brief, applicant has further objected to the
evidence which it asserts has been newly introduced by the
Examining Attorney with his appeal brief. We would simply point
out that these are copies of the evidence previously made of
record by the Examining Attorney and not new evidence.
Ser No. 75/332,218
5
mark INVENTIONEERING does not directly describe the parts
or qualities of its educational model kits, nor convey
information as to the nature or function of the kits,
namely, to construct models. Instead, according to
applicant, the “coined” term is used to ‘suggest an
abstract notion of discovery and ingenuity.” (Brief, p.6).
Applicant insists that it would take a multi-stage
reasoning process for a purchaser to associate the
attributes of applicant’s educational model kits with the
term INVENTIONEERING. Applicant argues that the evidence
being relied upon by the Examining Attorney, even if
admissible, shows use of the term in an abstract sense in
connection with creative or imaginative educational classes
or activities, or as a service mark for the same, not in a
descriptive sense in connection with goods of any sort,
including applicant’s model kits.3 Finally, applicant
points to printouts of third-party registrations for marks
using variations of the words “invention” and “imagineer,”
which applicant obtained from the U. S. Patent and

3 Applicant raises the issue of relevance of unregistered third
party uses of the mark INVENTIONEERING after the filing date of
the present application. Our chief reviewing court made it
explicitly clear in In re Thunderbird Products Corp., 406 F.2d
1389, 160 USPQ 730 (CCPA 1969) that the question of
registrability, and specifically, the question of
descriptiveness, extends at least until the time the application
is acted on by the Office. All evidence of use of the term
Ser No. 75/332,218
6
Trademark Office Trademark Database and attached to its
brief, as evidence of the suggestiveness, as opposed to
descriptiveness, of such terms.4
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. Whether or not a
particular term is merely descriptive is not determined in
the abstract, but rather in relation to the goods for which
registration is sought, the context in which the mark is
being used, and the significance the mark is likely to
have, because of the manner in which it is used, to the
average purchaser as he encounters the goods bearing the
mark. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). It is not necessary that the term or
phrase describe all the characteristics or features of the
goods or services in order to be merely descriptive; it is
sufficient if the term or phrase describes one significant

introduced by the Examining Attorney is relevant, all being prior
to the time of examination.
4 Thus, it is applicant who has introduced new evidence after the
appeal has been filed, in violation of Trademark Rule 2.142(d).
The Examining Attorney has failed to object to the evidence on
this basis, however, and has in fact responded thereto.
Accordingly, we have also considered the third-party
registrations. See TMEP § 1106.07(a).
Ser No. 75/332,218
7
attribute thereof. See In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991).
The evidence which the Examining Attorney has made of
record to support his contention that the term
“inventioneering” has a connotation which would be merely
descriptive of applicant’s educational model construction
kits includes excerpts from the Nexis database, of which
the following are particularly noted:
...Different theme each week, including marine
biology, archaeology, dinosaurs, kitchen chemistry and
inventioneering. Prices vary; lunch available...
Sun-Sentinel(Fort Lauderdale) (April 18, 1993).
...Pegasus School, lightbulbs have been going off in
front of children’s eyes and in their minds. As part
of a two-week “inventioneering” program, students
designed and built electromagnets, board games, paper
airplanes and other projects while studying famous
inventors... The Orange County Register (August 2,
1990).
The Internet printouts in general are found to be directed
to use of the term “inventioneering” in connection with
educational programs or school curriculum, such as the
references to the “inventioneering class” at the 1997
Dharra school, the “Inventioneering Workshop” for the
fourth, fifth and sixth graders at the Stone Creek
Elementary School in the Fall of 1997, the
“inventioneering” classes at the Northern Kentucky
University Summer Enrichment Program and a museum program
Ser No. 75/332,218
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in which students “will learn inventioneering skills which
can turn them into great inventors.”
We find this evidence fully adequate to demonstrate
use of the term “inventioneering” by others to describe
educational programs or activities directed to the
development of inventive or creative skills. Even if
“inventioneering” is a coined term, rather than one of
standard dictionary definition, it clearly has a recognized
connotation or meaning in the educational field. Moreover,
the applicability of this term cannot be relegated solely
to creative classes or activities per se, as argued by
applicant, but instead the term may also be descriptive of
goods which are used in connection with the classes or
activities. Thus, we agree with the Examining Attorney
that students or parents of students familiar with
inventioneering classes or activities would immediately
recognize the purpose or use of an INVENTIONEERING
educational kit, in the same manner that they would
recognize the purpose or use of a chemistry or anatomy kit.
Moreover, these are the persons who would be most likely to
be potential purchasers of applicant’s educational model
kits.
It is a general principle that the descriptiveness of
the term must be determined as viewed in connection with
Ser No. 75/332,218
9
the goods, not in the abstract. Thus, the question is not
whether the term describes the particular components in
applicant’s kits or conveys the information that these are
kits for constructing models. Instead the question is
whether the term INVENTIONEERING, when viewed in connection
with the educational model kits, would immediately and
directly convey information as to a significant attribute
of the goods. We believe that INVENTIONEERING does just
that; it informs potential purchasers that these are
educational model kits which may be used in participation
in creative activities of the nature encompassed by the
term “inventioneering.”
The third-party registrations introduced by applicant
for marks containing variations of the words “invention” or
“imagineer” for a variety of goods and services are
irrelevant. The mark involved here is INVENTIONEERING, a
term not found in any of these marks, and the issue is the
descriptiveness of the term when used in connection with
applicant’s particular goods.
Accordingly, we find INVENTIONEERING to be merely
descriptive of the educational kits for the design and
construction of models with which applicant intends to use
the mark.
Ser No. 75/332,218
10
Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. L. Simms
H. R. Wendel
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board