Point Roll, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 78612631 (T.T.A.B. Aug. 17, 2007)

Mailed: August 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Point Roll, Inc.
________

Serial No. 78612631
_______

Jeffrey Zucker of Fisher Zucker LLC for Point Roll, Inc.

Vivian M. First, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Hohein, Bucher and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Point Roll, Inc. has filed an application to register
on the Principal Register the mark FOLDOVER (in standard
character format) for services identified as “[p]roviding
temporary use of non-downloadable computer software for use
in creating web-based advertisements” in International
Class 42.1 The trademark examining attorney has refused
registration on the ground that applicant’s mark is merely

1 Serial No. 78612631, filed on April 20, 2005, and claiming
March 2, 2005 as the date of first use of the mark anywhere and
in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78612631

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descriptive of applicant’s services pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
After the refusal was made final, applicant appealed.
Both applicant and the examining attorney have filed appeal
briefs, and applicant has filed a reply brief.
We reverse the refusal to register.
Before turning to the merits of the appeal, we must
discuss an evidentiary matter. With its reply brief,
applicant has submitted a two-page printout from an
Internet website, presumably as an example of how
applicant’s software program works. This evidence is
untimely because it was not properly made of record prior
to the appeal. Accordingly, it will not be further
considered. See 37 C.F.R. § 2.142(d), which provides that
the record in the application should be complete as of the
filing of the appeal.
Turning now to the merits of the appeal, the examining
attorney contends that the term FOLDOVER is descriptive of
applicant’s services because, in the advertising industry,
the term FOLDOVER merely describes a type of advertisement,
and “the purpose and function of the [applicant’s] services
is the creation of a foldover ad in an electronic
environment.” (Examining Attorney’s brief at 4.) The
examining attorney further contends that applicant’s
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services are directed to professionals in the advertising
and publishing fields who are familiar with the nature of
foldover advertisements in the print media and will
“readily perceive” that the function of the applicant’s
services is the creation of an electronic version of a
foldover ad, where a virtually folded over portion can be
pulled away to reveal the full advertisement. (Id.)
Applicant, by contrast, contends that “the term
‘Foldover’ does not immediately express a function that the
Applicant performs, [but] instead at most it merely
suggests Applicant’s services provided.” (Applicant’s
brief at unnumbered p. 3.) Applicant further contends that
the examining attorney misreads and takes too narrow a view
as to the subject matter and scope of its “activities.” In
applicant’s view, the term “Foldover” is “non-descriptive
of the computer software virtual advertising tool which
allows for a seamless page transition to reveal the
advertiser’s promotion. … [S]ince the advertisement appears
in a one dimensional setting, it is impossible for the
advertisement to be literally folded over. … Applicant’s
service in no way reflects any similarities to the
advertising industry’s practice that the examining attorney
references in the final office action, which is an
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advertisement that is unfolded to show a multi-page ad.”
(Applicant’s brief at unnumbered p. 2.)
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
(CCPA 1978). It is not necessary, in order to find that a
mark is merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality, feature, etc. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Further, it is
well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
A term which is suggestive, however, is registrable.
A suggestive term is one that suggests, rather than
describes, characteristics or attributes of a product, such
that imagination, thought or perception is required to
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reach a conclusion about the nature of the goods or
services. In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987). There is often a fine line of
distinction between a suggestive and a merely descriptive
term, and it is sometimes difficult to determine when a
term moves from the realm of suggestiveness into the sphere
of impermissible descriptiveness. In re Recovery, Inc.,
196 USPQ 830 (TTAB 1977). It is well settled, however,
that where there is doubt on the issue, the doubt must be
resolved in applicant’s behalf and the mark should be
published for opposition. See In re Rank Organization
Ltd., 222 USPQ 324, 326 (TTAB 1984) and the cases cited
therein.
The examining attorney’s refusal is premised on her
assertion that “[i]n the advertising industry, FOLDOVER
merely describes a type of advertising that features a
folded over portion which can be unfolded to reveal the
advertising material concealed beneath.” We find this
assertion, however, is not substantiated by the record.
Indeed, the meager evidence purportedly showing that the
term “Foldover” merely describes advertising material
consists of three excerpts from a search of the Internet
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using the Google search engine.2 One reference to “fold-
over” is found at (wwww.mindfully.org) in an article
entitled “Philip Morris draws fire for anti-smoking
freebies to school.” The article, in pertinent part, reads
as follows (underlining added):
Millions of book covers sent to schools by
cigarette maker Philip Morris show children
on snow boards and ski’s and warn them:
“Don’t Wipe Out. Think. Don’t Smoke.”

The free covers have sparked protests from
education and health advocates across the
country, who call the brightly colored fold-
over covers a smoke screen that violates a
1998 ban on tobacco advertising to children.

In this context, “fold-over” refers to book covers as
opposed to any type of advertising material. While there
may be some dispute whether the illustration on the covers
serves as subliminal advertising for smoking, the term
fold-over describes a type of book cover.
The screen shots from a second website
(www.customdecalsandstickers.com) show a product listing
for Cole Industries, Inc. The products include, under the
category “Signs and Posters,” “Fold-Over Posters.” In the
absence of any context, it is unclear whether the posters
are in the nature of advertisements. Similarly, the third

2 This evidence was submitted as exhibits to the examining
attorney’s November 29, 2005 Office action.

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website (www.hirebic.com), appears to show a listing of a
variety of goods and services. Under the category
“ADVERTISING,” there is a listing for a “4 Panel Foldover
5½” x8.” Again, in the absence of context, it is unclear
what type of advertising product and/or service is being
offered. Therefore, the probative value of this evidence
is limited, at best, in assessing the consuming public’s
perception of the term FOLDOVER as a type of advertising
format or material.3
Simply put, there is insufficient evidence to find
that the term “foldover” is merely descriptive of
advertising material.
Further, we are not persuaded by the examining
attorney’s assertion that applicant’s services are directed
to professionals in the field of publishing and advertising
who are familiar with the nature of foldover advertisements
in the print media, and who will “readily perceive” that
the function and/or purpose of applicant’s services is to
create a simulation of a “FOLDOVER” advertisement for use
online. Although the press release for applicant’s recited

3 As regards Internet evidence, the mere appearance of a term in
a brief summary has very limited probative value, especially
compared with evidence that provides the context within which a
term is used. See e.g., In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828 (Fed. Cir. 2007); and In re King Koil
Licensing Co., 79 USPQ2d 1048 (TTAB 2006).
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services under its FOLDOVER mark does address applicant’s
commitment to serve the needs of the “publisher,” there is
no evidence that applicant limits its services to
publishers. Moreover, even if applicant’s services were
directed to such professionals, on this record, we cannot
conclude that these professionals would recognize the term
FOLDOVER as describing a type of print advertising.
The examining attorney also points to descriptive use
by applicant of the terms “folds over” and “fold over.” In
particular, the examining attorney notes:
The applicant’s March 2, 2005 press release
for its services states: “When a user
initiates a mouse-over, the ad visually
folds over the page, exposing close to a
full page ad” [emphasis added]. Applicant’s
response of December 9, 2005 states that the
“software allows for advertiser’s promotions
to appear as a fold over” [emphasis added].

(Examining Attorney’s brief at p. 3.)
As regards the press release, applicant seeks to
register the term FOLDOVER, not “folds over.” Further,
when the term FOLDOVER is used in the press release, it
appears as FoldOver. The capitalization of the letters “F”
and “O” in the compound word FoldOver sets the term apart
from the remainder of the text, such that applicant’s use
of the term FoldOver is in a trademark manner. As such, we
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find that applicant has not used the phrase “folds over” to
describe its services.
With respect to the December 9, 2005 response, we also
find applicant’s use of the phrase “fold over” is not
descriptive. The response reads more fully:
… The Applicant’s activities are not related to
the advertising industry in which an
advertisement can be literally unfolded that the
examining attorney found the mark to be
descriptive of.4 Rather, the distinguishing and
essential feature of the mark is the technology
of the advertisement service.

The Applicant’s computer software allows for
advertiser’s promotions to appear as a fold over,
when in reality the technology merely simulates
the pulling back of a page to expose the
advertisement.

(Response at p. 2). Here, applicant is referring to the
type of print advertisement that the examining attorney
labeled a “fold over.” As previously stated, there is
insufficient evidence to show that “fold over” is merely
descriptive as applied to such print advertisements.5

4 We note that applicant did not concede that the term “fold
over” is descriptive of a type of print advertising material.
Indeed, applicant, in its reply brief, states “[w]hile the term
‘foldover’ may have some significance in the advertising
industry, in which the Applicant does not concede this point, it
has no obvious meaning in relation to Applicant’s services, and
as the Board found in TBG [In re TBG, Inc., 229 USPQ 759 (TTAB
1986)], at worse the term is suggestive” (emphasis supplied).
(Applicant’s reply brief at p. 3).

5 Even if we had found the term “FOLDOVER” descriptive of print
advertising materials, it would not have changed our decision.
We agree with applicant that the facts in this case are analogous
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Nor do we find sufficient evidence that the term
FOLDOVER is descriptive when used in connection with
applicant’s services of “[p]roviding temporary use of non-
downloadable computer software for use in creating web-
based advertisements, particularly given that the examining
attorney’s basis for refusal hinged on a finding that
“foldover” merely describes certain types of print
advertisements. We conclude that a multistage reasoning
process or imagination would be necessary for purchasers of
these services to deduce anything meaningful about the
nature of the services from the mark FOLDOVER. That is,
the designation FOLDOVER has not been shown to immediately
describe any significant feature or purpose of applicant’s
particular services. While FOLDOVER may be suggestive of

to the facts in TBG, Inc. In that case, the Board found that the
designation SHOWROOM ONLINE for “leasing computer databases and
video disks in the field of interior furnishings and related
products of others” is, at worst, suggestive because it has no
obvious meaning in relation to that applicant’s services – since
that applicant did not represent manufacturers of the products,
did not sell or lease interior furnishings, and was not otherwise
involved in the interior furnishing business. Similarly in this
case, the designation FOLDOVER has no immediate significance to
applicant’s provision of non-downloadable software for use in
creating web-based advertisements. Although applicant’s software
allows an advertiser’s promotion to appear on a webpage,
applicant is not selling the advertising on the space available
for promotion, nor is applicant in the advertising industry. As
applicant states, it is “merely facilitating the opportunity to
place the promotion on the website through its software.”
(Applicant’s reply brief at p. 3).
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the identified services, it is not merely descriptive
thereof.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is reversed.