Scrum Alliance, Inc.

Trademark Trial and Appeal Board

Sep 4, 2009

No. 77095301 (T.T.A.B. Sep. 4, 2009)

Hearing: Mailed: September 4, 2009
July 22, 2009 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scrum Alliance, Inc.
________

Serial No. 77095301
_______

David M. Perry of Blank Rome LLP for Scrum Alliance, Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Holtzman and Drost, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On January 31, 2007, Scrum Alliance, Inc. applied to
register the designation CERTIFIED SCRUMMASTER (in standard
character form, “CERTIFIED” disclaimed) on the Principal
Register as a certification mark for the following services
in International Class B:
training, mentoring, and tutoring services in the
fields of product development, product design,
product development consultation, product
manufacturing consultation, computer software
development and computer software development
management; educational services, namely,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77095301
2
conducting classes, seminars, workshops in the
fields of product development, product
development consultation, product manufacturing
consultation, computer software development and
computer and computer software development
management; providing information in the fields
of product development, product design, product
development consultation, product manufacturing
consultation, computer software development and
computer software development management; project
management services, product development
services, product development and design
consultation, and product manufacturing
consultation.

Applicant’s certification statement reads “the person
displaying the mark has demonstrated a specific level of
training in specified product development processes in
accordance with standards established by the certifier.”
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that the designation CERTIFIED SCRUMMASTER is merely
descriptive of the identified services. Applicant argued
against the refusal, and the examining attorney made the
refusal final. Applicant filed a request for
reconsideration wherein it again argued against the
refusal, and in the alternative, presented a claim of
acquired distinctiveness under Section 2(f) of the
Serial No. 77095301
3
Trademark Act.1 The examining attorney was not persuaded by
applicant’s arguments, however she accepted the claim of
acquired distinctiveness.
Applicant has appealed; applicant and the examining
attorney have filed briefs.
The only issue on appeal is whether CERTIFIED
SCRUMMASTER is merely descriptive of the identified
services. We note that there is no dispute that both
“CERTIFIED” and “SCRUM” are descriptive terms as used in
connection with the identified services. Indeed,
“certified” is a generic term when used as word in a
certification mark, and applicant has disclaimed any rights
to the term. In addition, the examining attorney has
submitted evidence to support the conclusion that the term
“Scrum” is descriptive. The term “Scrum” is defined as
“[a]n agile software development methodology…” (Computer
Desktop Encyclopedia, 2008).

1 “An applicant may argue the merits of an examining attorney’s
refusal and, in the alternative, claim that the matter sought to
be registered has acquired distinctiveness under §2(f).”
Trademark Manual of Examining Procedure §1212.02(c) (5th ed. rev.
September 2007). Contrary to the examining attorney’s suggestion
at the oral hearing, the fact that an applicant elects to present
an alternative claim of acquired distinctiveness has no bearing
on the underlying issue of mere descriptiveness.
Serial No. 77095301
4
The examining attorney maintains that CERTIFIED
SCRUMMASTER is merely descriptive because it immediately
conveys that a feature of the identified services is
certifying a scrum master in the field of project
development. The examining attorney has submitted excerpts
of articles from the Internet and LEXIS/NEXIS database
wherein the term “scrum master” is used:
After attending a Certified Scrum Master Training
Session, the discussion about the difference
between the Scrum Master and a “traditional”
project manager raged long with many good
arguments.
http://bradstorm.com

Debate: Is Scrum Master Certification Good for
the Agile Community?
The certification debate has surfaced again. The
members of the Industrial XP mailing list have
been discussing whether the Certified Scrum
Master (CSM) Program is good or bad for our
community.
http://www.infoq.com

Job title: Agile Scrum Master (Project Manager)
….
Description
The Agile Scrum Master (Project Manager) will
facilitate meetings, oversees development,
coordinates with management to ensure appropriate
resource allocations and addresses team issues.
http://www.tech-centric.net

It is critical to remember that an estimate is
just that — an estimate — and in agile
development it is perfectly acceptable for
estimates to change, new tasks to be added, or
unneeded tasks removed. It is crucial for the
Serial No. 77095301
5
Scrum Master to foster an atmosphere that values
honest estimates, without punishing team members
for overestimating or underestimating.
http://www.devx.com/enterprise

Scrum Master Certification by Net Objectives
Listen to instructor Ron Claar on Scrum Master
Certification by Net Objectives
This course is based on the principles of Scrum
and, with three full days, gives the time to
allow the participants to practice the
interactions that are critical to their success
as a Scrum Master. As a result of successful
completion of the program, students receive an
extensive list of competencies that delineate the
skills required for performing as a Scrum Master.
http://www.netobjectives.com

Scrum Master Vs Project Manager
Scrum Master is specialized in ensuring the scrum
process is implemented as intended. He is the
one who takes care of the different agile
practices to reach the team.
http://agilesoftwaredevelopment.com

Everyone has to start by answering what they have
done yesterday. This will not only help the
scrum master to see the status of the work
completed but also will know if there is [sic] no
impediments.
http://softwareandservice.wordpress.com

SCRUMMASTER TRAINING offered by Rally Software
Development, 9 a.m. to 5 p.m. Wednesday and
Thursday, Hilton North Raleigh, 3415 Wake Forest
Road …
The News & Observer (Raleigh, North Carolina);
February 3, 2006

City Manager Frank Bruno authorized $600 in
matching funds that were granted to one employee
to attend Certified ScrumMaster Training by
Boulder-based Rally Software.
Daily Camera (Boulder, Colorado); January 12,
2008

Serial No. 77095301
6
In addition, the examining attorney submitted a
definition of the term “master” which means, inter alia, “a
worker qualified to teach apprentices and carry on the
craft independently” and “an expert” (The American Heritage
Dictionary of the English Language, 4th ed. 2000); and
copies of third-party registrations, which issued on either
the Principal Register on the basis of acquired
distinctiveness or on the Supplemental Register, for marks
that include the term MASTER for educational services and
indicating membership in an association.
The application also includes evidence submitted with
a letter of protest, including the following “Wikipedia”
entries and excerpts from the Internet:
Scrum (development): Scrum is a lightweight
agile method for software development, named
after the scrum procedure in the sport of rugby.
….
Methodology
Techniques
These are techniques that are needed for the
Scrum development phase.
Team creation
Scrum dictates that a development team should
perform as a sports team, every member working
independently but towards the same goal. Scrum
suggests that a team has a maximum of 6 – 7
members. The team facilitator is called the
“Scrum Master.” His/her job is to implement and
manage the Scrum process in the project.

Scrum (Management): … Scrum is facilitated by a
ScrumMaster, whose primary job is to remove
impediments to the ability of the team to deliver
the sprint goal. The ScrumMaster is not the
Serial No. 77095301
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leader of the team (as they are self-organizing
but acts as a productivity buffer between the
team and any destabilizing influences. (italics
in original)

Agile University A Place to Learn, Certify and
Teach
…
COURSES
Certified ScrumMaster Training
http://www.agileuniversity.org

Solutions IQ
…
SCRUMMASTER TRAINING
May 16 & 17
June 20 $ 21
http://www.solutionsiq/com

DANUBE Technologies
…
Public Courses
Certified ScrumMaster
Bellevue, WA
June 08-07 2007
http://www.danube.com

ScrumMaster Certification
To acquire the formal Scrum methodology. Scrum
Project Management software, and training – or to
find a Certified ScrumMaster to help you
implement Scrum, go to CertifiedScrum. To learn
iterative, incremental development the agile way
using Scrum, the next ScrumMaster Certification
classes are:
May 22-23 San Jose, CA – CSM course with
Enterprise content
http://controlchaos.com

Applicant, in urging reversal of the refusal to
register, maintains that the term SCRUMMASTER is only
suggestive of the services it certifies; that SCRUMMASTER
is a coined term with a lilting cadence which identifies
Serial No. 77095301
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the certification program created by applicant and used by
software developers and project managers; and that the
combined term CERTIFIED SCRUMMASTER is at most suggestive
of the services applicant certifies. According to
applicant, “much of the evidence submitted by the Examining
Attorney in fact references Applicant and its certification
program.” (Request For Reconsideration, p. 5). Applicant
maintains that the examining attorney may not simply rely
on the meanings of the individuals words, “certified,”
“scrum” and “master,” to establish that the combined term
CERTIFIED SCRUMMMASTER is merely descriptive. Insofar as
the word “master” is concerned, applicant argues that such
word is only suggestive. Applicant has submitted third-
party registrations for marks that include the word MASTER
which applicant maintains support its position that MASTER
is a suggestive term, and when combined with a descriptive
or even generic term, the combination still functions as a
trademark.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
Serial No. 77095301
9
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
On the other hand, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services, the mark is suggestive and registrable. See
In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001); and In re Gyulay, supra. It has long been
acknowledged that there is often a thin line between terms
that are merely descriptive and those that are suggestive.
See In re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992).
Considering all of the evidence and arguments of the
examining attorney and applicant, we find that it has not
been established that the mark CERTIFIED SCRUMMASTER is
merely descriptive of the services applicant certifies.
With respect to the term SCRUMMASTER, per se, we are not
persuaded that it has descriptive significance when used in
connection with such services.
Serial No. 77095301
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The record shows that “Scrum” is a software
development process involving several members of a team who
work independently towards a single goal. There is some
evidence of use of “Scrum Master,” in connection with
training services and educational services in “Scrum”
methodology. However, it appears that most of these uses
of “Scrum Master” are indeed references to applicant and
its certification program. Indeed, in most of the
excerpts, SCRUMMASTER is depicted in a trademark manner,
that is, in all capital letters, or with initial capital
letters. It certainly is not clear from the evidence that
“Scrum Master” is being used in a descriptive manner to
refer to “a worker qualified to teach apprentices” or “an
expert” in “Scrum.” We conclude that there is a certain
ambiguity about the term SCRUMMASTER such that applicant’s
mark CERTIFIED SCRUMMASTER does not forthwith convey an
immediate idea of a feature or characteristic of the
services applicant certifies.
Applicant and the examining attorney have submitted
competing third-party MASTER registrations in support of
their respective positions. The registrations relied on by
applicant include such registered marks as: ARBORMASTER
for “educational services, namely, conducting seminars,
workshops, classes and competitions for arborists in the
Serial No. 77095301
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field of safety and productivity; QUOTEMASTER for
educational services, namely, conducting classes, seminars
and workshops in the fields of buying cash flows of
mortgages; ANNUITY MASTER for “educational services,
namely, conducing courses and seminars in the field of
financial planning and annuity programs; MASTERSERIES for
educational services, namely, conducting online classes,
seminars, workshops in the field of performance improvement
training in business known as soft-skills; and MASTER CLASS
AT JOHNSON & WALES for entertainment and educational
classes, namely, a television series about cooking.”2
The examining attorney’s evidence includes the
registered marks AMERICAN MUSIC MASTERS for “educational
services, namely conducting seminars, conferences and
workshops in the field of contemporary music” (Section
2(f); MUSIC disclaimed); MASTER CERTIFIED COACH (MCC) for
“education services, namely, coaching services in the filed
of professional business and personal life coaching”
(MASTER CERTIFIED COACH disclaimed); MASTER THERAPIST for
educational services, namely providing course of

2 The other MASTER third-party registrations submitted by
applicant cover goods and/or services unrelated to those involved
herein and, therefore, are of limited probative value.
Serial No. 77095301
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instruction in the field of psychotherapy (Supplemental
Register); ITSM MASTER (Section 2(f); ITSM disclaimed) for
educational services, namely, providing classes in
information technology management methods”; and LOUISIANA
MASTER GARDENER and design (LOUISIANA MASTER GARDENER
disclaimed) for “indicating membership in an association of
volunteer horticultural enthusiasts and educators in the
field of gardening.”
These third-party registrations do appear to
demonstrate that the U.S. Patent and Trademark Office has
in the past taken inconsistent positions with respect to
whether the word MASTER is suggestive or descriptive when
applied to educational services. At the very least, they
reaffirm the principle that each case must be decided on
its own facts.
Finally, we recognize that we must resolve whatever
doubt we may have regarding the merely descriptive
character of the mark in favor of applicant and the mark
should be published for opposition. In re Rank
Organization Ltd., 222 USPQ 324 (TTAB 1984) and cases cited
therein.
Based on the record before us, we conclude that the
mark CERTIFIED SCRUMMASTER, when used in connection with
Serial No. 77095301
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the services applicant certifies, is not merely
descriptive.
Decision: The refusal to register is reversed and
applicant’s mark is entitled to registration on the
Principal Register without the Section 2(f) claim.