Prosit LLC

Trademark Trial and Appeal Board

May 30, 2007

No. 78539762 (T.T.A.B. May. 30, 2007)

Mailed: May 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In Prosit LLC
________

Serial No. 78539801
Serial No. 78539762
_______

Joseph M. Konieczny, Sr. of Joseph M. Konieczny, P.C. for Prosit
LLC.

Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Prosit LLC, has filed two applications to
register the mark PROSIT PRINT SOLUTIONS (both in standard
character form) for goods ultimately identified as follows:
Commercial copying services, namely duplicating of,
photocopying of, and compiling of documents for
others; compiling and mailing of documents and items
to recipients on a mailing list (in Class 35).1

1 Serial No. 78539801, filed December 29, 2004, alleging a date of
first use in June 2002 and first use in commerce on October 26, 2002.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial Nos. 78539801 and 78539762
2
Commercial printing services, namely printing of,
laminating of, and collating of documents, advertising
materials, brochures, pamphlets, labels, stationary,
business cards, folders, envelopes, binders, business
tabs, photographs, signs, banners and certificates;
desktop publishing for others; digital printing of
documents; customized printing of company names and
logos on the goods of others for promotional and
advertising purposes; assembling and binding of
documents and booklets; electronic imaging, scanning,
digitizing, altering and retouching photographic
images, artwork, paintings and mementos; duplicating
CD's and DVD's (in Class 40).2

As to each application, the trademark examining attorney has
refused registration in view of applicant's failure to comply
with the requirement for a disclaimer of PRINT SOLUTIONS under
Section 6 of the Trademark Act based on the ground that the
wording is merely descriptive of applicant's services under
Section 2(e)(1) of the Act.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs. Because
the marks and issues in both cases are the same, the appeals are
hereby consolidated.
As a preliminary matter, we note that applicant acknowledged
that the word PRINT is descriptive in connection with the
services in Class 40 in the '762 application, and accordingly
agreed to disclaim the term in that application. Applicant
declined to enter a disclaimer of PRINT in the '801 application

2 Serial No. 78539762, filed December 29, 2004, alleging a date of
first use in June 2002 and first use in commerce on October 26, 2002.

Serial Nos. 78539801 and 78539762
3
for the Class 35 services, asserting that the term is not
descriptive of those services.3 Notwithstanding that applicant
has disclaimed PRINT in one application and not in the other, the
issue in both cases is whether the entire phrase PRINT SOLUTIONS
is merely descriptive of applicant's services.
The examining attorney argues that PRINT SOLUTIONS in the
context of applicant's services describes the purpose of such
services to resolve a problem. The examining attorney relies on
a dictionary definition of "copy" to show the descriptive meaning
of PRINT in relation to applicant's Class 35 services; a
dictionary definition of "solutions" supplied by applicant; the
use of PRINT SOLUTIONS or variants of that phrase in applicant's
specimen and website materials; and a number of third-party
registrations in the same or related fields wherein "solutions"
is disclaimed or registered under 2(f) or on the Supplemental
register.
Applicant contends that the word "solutions" is too broad
and vague to describe applicant's services with the requisite
degree of particularity, arguing that the term therefore fails to
immediately convey the idea of "commercial copying services" or
"commercial printing services." Applicant points to the
dictionary definition of "solution," arguing that the definition

3 Applicant, in its brief in the '801 application, incorrectly states
that "the "sole issue" on appeal is whether the word SOLUTIONS is
merely descriptive.
Serial Nos. 78539801 and 78539762
4
"is devoid of any reference or suggestion to applicant's
particular services." Applicant also relies on In re Hutchinson
Technology, 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); and two
non-precedential Board cases involving the term SOLUTIONS, In re
Acquisition Solutions, Inc., WL 363389 (TTAB 2005) and In re
Idatech, WL 1090651 (TTAB 2004). In addition, applicant
submitted 226 third-party pending applications and registrations
for services involving or related to copying or printing services
claiming that in "roughly 80% of records" the word "solutions" is
not disclaimed, and speculating that "the remaining 20% elected
to disclaim the wording 'solutions' rather than spend the time or
money to traverse the disclaimer requirement." Applicant
concludes from this evidence that the "prevailing view" of the
Office supports registration of the phrase without a disclaimer
of SOLUTIONS.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use of the
goods or services with which it is used or intended to be used.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Moreover, the question of whether a particular term is merely
descriptive must be determined not in the abstract, but in
relation to the goods or services for which registration is
Serial Nos. 78539801 and 78539762
5
sought. See In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986).
Applicant is providing "commercial printing services" and
"commercial copying services" under the mark PROSIT PRINT
SOLUTIONS. We agree with the examining attorney that in the
context of those services the phrase PRINT SOLUTIONS immediately
describes a significant function, purpose or intended result of
the services.
We take judicial notice of relevant definitions of "print"
from Microsoft Encarta College Dictionary (2001) as "1 MAKE
SOMETHING WITH PRINTING MACHINE to make a copy, document or
publication using a printing press or a computer printer - These
books were printed in Canada. 2 PUBLISH to publish information
or a publication - The company prints several news magazines in
addition to books."4 The dictionary listing submitted by the
examining attorney from The American Heritage Dictionary of the
English Language (3rd ed. 1992) (electronic version) defines
"copy" as "One specimen or example of a printed text or picture."
Thus, the descriptive meaning of the term PRINT in relation to
printing services is clear, and it encompasses the service of
copying documents.

4 The Board may take judicial notice of dictionary definitions. See,
e.g., University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial Nos. 78539801 and 78539762
6
In the dictionary listing supplied by applicant, "solution"
is defined as "3. The method or process of solving a problem. 4.
The answer to or disposition of a problem."5 Thus, the phrase
PRINT SOLUTIONS as a whole, directly informs applicant's
customers that applicant can solve their problems concerning
print projects (which would include copying documents), and the
results they can expect to achieve from applicant's printing and
copying services. The fact that applicant's particular services
are not mentioned in the definition of "solution" is irrelevant.
There is no requirement that the definition identify every
conceivable example of a solution in order to find the term
descriptive. The issue is not the descriptive meaning of
SOLUTIONS alone, but rather whether PRINT when combined with
SOLUTIONS is descriptive. See In re Patent & Trademark Services
Inc., 49 USPQ2d 1537 (TTAB 1998) (finding applicant's contention
that the term "services" in the phrase PATENT & TRADEMARK
SERVICES, INC. is so broad that the phrase cannot be held merely
descriptive unpersuasive "because the term 'services' in the
phrase does not stand alone but rather is modified and defined by
the words 'patent & trademark.'" Emphasis in original). There
is no question that the ordinary meaning of the word "solutions"

5 Applicant identified the source of this listing as "The American
Heritage Dictionary (2d Col. ed.) at 1164." A copy of the entry itself
has not been provided and we were unable to locate that source.
However, we note that the same definition appears in The American
Heritage Dictionary of the English Language (2003) (xreferplus.com) and
we take judicial notice of its content.
Serial Nos. 78539801 and 78539762
7
would be well understood in the context of the phrase PRINT
SOLUTIONS, for printing and copying services.
The meaning of PRINT SOLUTIONS is also made clear from the
descriptive references to that phrase in the brochure submitted
as a specimen submitted with the application. The brochure
informs applicant's customers that applicant is a "FULL SERVICE
PRINT PROVIDER" that "CAN SOLVE ALL YOUR PROBLEMS" and, as noted
earlier, "solution" is defined as the method or process of
"solving a problem." In addition, the wording "print solutions"
is depicted throughout the brochure in much smaller, lower case
letters beneath the large capital letters of "PROSIT," clearly
conveying the impression of informational matter. The page from
applicant's website (prositweb.com) submitted by the examining
attorney states "...Let Prosit be your printing solution." As
used and referred to in applicant's promotional materials, the
wording PRINT SOLUTIONS would clearly be perceived by applicant's
customers as a descriptive term. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) ("Evidence of
the context in which a mark is used ... in advertising material
... is probative of the reaction of prospective purchasers to the
mark"); and In re Educational Communications, Inc., 231 USPQ 787,
790 (TTAB 1986) ("applicant's own highly descriptive usages of
the components of its asserted mark ... is strong evidence of its
generic nature").
Serial Nos. 78539801 and 78539762
8
We note, in addition, the 13 use-based, third-party
registrations submitted by the examining attorney for marks in
similar fields containing disclaimers of SOLUTIONS or where the
marks are registered under Section 2(f) or on the Supplemental
Register. For example, in Registration No. 2475166 for the mark
OUTPUT TECHNOLOGY SOLUTIONS for commercial printing services,
"Technology Solutions" is disclaimed; in Registration No. 2303416
for the mark CREATIVE AUTOMATION SOLUTIONS for desktop publishing
for others, "Automation Solutions" disclaimed; in Registration
No. 2786687 for the mark IKON OFFICE SOLUTIONS for copying,
finishing and binding documents, "Office Solutions" disclaimed;
and Registration No. 2619924 for the mark LANDMARK COLOUR
COMMUNICATIONS INTEGRATED PRINTING SOLUTIONS for color printing
of brochures, "Colour Communications Integrated Printing
Solutions" is disclaimed. While not conclusive, this evidence
clearly suggests that when used in certain contexts, the term has
a descriptive meaning and would be perceived by purchasers as a
descriptive term. "Such third party registrations show the sense
in which the word is used in ordinary parlance and may show that
a particular term has descriptive significance as applied to
certain goods or services." Institut National Des Appellations
D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d
1190, 1196 (Fed. Cir. 1992). See also In re Box Solutions Corp.,
79 USPQ2d 1953, 1955 (TTAB 2006) ("Third-party registrations can
Serial Nos. 78539801 and 78539762
9
be used in the manner of a dictionary definition to illustrate
how a term is perceived in the trade or industry").
Applicant's evidence of the third-party registrations and
applications, on the other hand, is not particularly useful to
the analysis.6 First, the records are incomplete. They do not
indicate whether the mark is registered on the Principal or
Supplemental Register, or whether the mark is registered under
Section 2(f). Thus, these records are of no probative value. We
also point out that the third-party applications and cancelled
registrations, which together constitute a substantial portion of
the records submitted by applicant, have no probative value on
the issue of registrability. They are evidence only of the fact
that the application/registration was filed on a certain date.

6 Applicant did not properly introduce these applications and
registrations. They are not official records of the USPTO but rather
were obtained from a private company's database (trademark.com) and
there is nothing to indicate the accuracy or reliability of the
information contained the database. Nevertheless, because the
examining attorney did not object to this evidence and in fact has
treated it on the merits we have considered it as stipulated into the
record. On the other hand, Applicant attached over 400 pages of
evidence to its brief which we have not considered. Applicant makes no
reference to the evidence in its brief, but it appears to consist of
full document printouts of third-party applications and registrations
which may or may not have been previously submitted. The examining
attorney's objection to this evidence is well taken. Applicant should
have submitted this evidence prior to appeal. The evidence was filed
after the record in this case was closed and it is therefore untimely.
See Trademark Rule 2.142(d). Even if we had considered this evidence,
as discussed infra, it would not change our decision in this case. We
also point out that the listing of third-party applications and
registrations accompanying applicant's response to the first Office
action which was obtained from the USPTO's TESS database, is of no
probative value for what applicant is attempting to show because in
addition to lack of information about the register, the list fails to
include the goods or services.
Serial Nos. 78539801 and 78539762
10
Furthermore, even assuming that all of the third-party
registrations are registered on the Principal Register with no
Section 2(f) claim, the evidence would still not be persuasive.
It is well settled that each case must be decided on its own
facts, based on the particular mark, the particular goods or
services, and the particular record in each application. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); and In re Scholastic Testing Services, Inc., 196 USPQ
517 (TTAB 1977). We are not privy to the records in those cases
or what went into the determination that the marks were
registrable. Moreover, the fact that SOLUTIONS was not
disclaimed or found descriptive in those third-party marks does
not compel a finding that SOLUTIONS is not descriptive in the
context of this mark. See In re Nett Designs, supra at 1566,
observing that a term "may tilt toward suggestiveness or
descriptiveness depending on context and any other factor
affecting public perception." We note, for example, that in a
number of the registrations, the combination of SOLUTIONS with
another term results in a mark which is, in its entirety, a
nondescriptive or unitary term that simply has no direct meaning
in relation to the identified services. For example,
Registration No. 2895452 for the mark MILLIONS OF PAGES. ONE
SOLUTION; Registration No. 2872641 for the mark BUNDLED SOLUTION;
Registration No. 2818765 SOLUTIONS FOR YOUR SCIENCE; Registration
Serial Nos. 78539801 and 78539762
11
No. 2700802 for the mark OPTIMUS SOLUTIONS; and Registration
No.2159274 for the mark SINGLE SOURCE, MULTIPLE SOLUTIONS.
Nevertheless, even to the extent the marks in these prior
registrations have some characteristics similar to applicant’s
application, as our primary reviewing court stated in In re Nett
Designs Inc., at 1566, "the PTO’s allowance of such prior
registrations does not bind the Board or this court."
We also point out that this evidence fails to establish any
"prevailing view" of the Office that SOLUTIONS is not
descriptive. As stated in In re First Draft, Inc., 76 USPQ2d
1183, 1188 (TTAB 2005) "even proof that various examining
attorneys have registered a particular type of mark in the past
does not establish that there is an Office practice holding such
marks are generally registrable."
Applicant's reliance on Hutchinson Technology, and the two
non-precedential decisions, Acquisition Solutions and Idatech, in
support of its contention that SOLUTIONS is too broad and vague
to be merely descriptive is misplaced. To begin with, decisions
not designated as precedential are not binding on the Board.
Further, all of the cited cases are distinguishable on their
facts. In Hutchinson Technology at 1493, the Federal Circuit
noted that the Board, in finding "technology" descriptive of
applicant's goods, relied solely on applicant's concession that
"technology" is used on many goods similar to those in the
Serial Nos. 78539801 and 78539762
12
application, and that the Board "offered no other evidence to
support its findings on the effect of the inclusion of
'technology' in Hutchinson's mark as a whole." In the present
case, however, the record includes dictionary definitions and
promotional materials demonstrating the meaning and perception of
the phrase by the relevant public, as well as third-party
registrations wherein the word has been treated as descriptive
for similar services. We also note that, notwithstanding the
Court's finding in that case, the Court still required applicant
to submit a disclaimer of "Technology."
In Acquisition Solutions, involving the mark ACQUISITION
SOLUTIONS TRAINING INSTITUTE for "training services," the Board
stated that applicant was not literally providing "acquisition
solutions" but rather "training services," and thus found that
the mark was one step removed from describing the services. That
extra step does not exist here. In this case, there is an direct
and immediate relationship between applicant's mark and its
services. Applicant is providing PRINT SOLUTIONS for printing
problems.
Finally, unlike Idatech, where the Board found that ADVANCED
FUEL CELL SOLUTIONS was not descriptive of electrical power
generation goods and services because, based on the record, the
meaning of SOLUTIONS in the context of a "FUEL CELL" was unclear,
Serial Nos. 78539801 and 78539762
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as explained earlier, the information conveyed by PRINT SOLUTIONS
in the context of applicant's services is quite clear.
None of the cited cases compel a finding in this case or in
any given case that the word "solutions" is too broad and vague
to be found descriptive. In fact, there is at least one reported
decision holding that "solutions" is descriptive. See In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (finding SOLUTIONS in
the mark BOX SOLUTIONS merely descriptive of computer hardware
and requiring a disclaimer of the term).
We find that purchasers of applicant's commercial printing
and copying services would, without any guesswork or the exercise
of any imagination, immediately understand the descriptive
meaning of PRINT SOLUTIONS as applied to those services.
Decision: The refusal to register in both applications is
affirmed. However, in the event that applicant submits the
required disclaimer of PRINT SOLUTIONS in each application within
thirty days from the mailing date of this decision, the refusal
to register will be set aside and the applications will proceed
to publication.7 See Trademark Rule 2.142(g).

7 A proper disclaimer would read: "No claim is made to the exclusive
right to use PRINT SOLUTIONS apart from the mark as shown."