Targus Information Corp.

Trademark Trial and Appeal Board

Jun 9, 2009

No. 77201284 (T.T.A.B. Jun. 9, 2009)

Mailed: June 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Targus Information Corp.
________

Serial No. 77201284
Filed: June 8, 2007
_______

Kathleen A. Pasulka, Procopio Cory Hargreaves & Savitch LLP
for Targus Information Corp.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104, Chris Doninger, Managing Attorney.
_______

Before Bucher, Kuhlke, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of ADNETWORK ADVISOR (in
standard characters) for “business information services,
namely, providing information about the purchasing habits of
particular consumers and organizations” in International
Class 35, and “information services, namely, providing
financial information describing particular customers and
organizations,” in International Class 36.1
Registration has been finally refused pursuant to
Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1), on the

1 Based upon the allegation of a bona fide intent to use the mark
in commerce. Applicant has disclaimed the exclusive right to use
“ADVISOR” apart from the mark as shown.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77201284
2
ground that applicant’s mark is primarily merely descriptive
of the identified services.
We affirm.
I. Descriptiveness
A. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the products for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the issue is whether someone who knows what the
products are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am.
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

Serial No. 77201284
3
“On the other hand, if one must exercise mature thought
or follow a multi-stage reasoning process in order to
determine what product or service characteristics the term
indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980). Even where individual terms are
descriptive, combining them may evoke a new and unique
commercial impression. If each component retains its merely
descriptive significance in relation to the goods, without
the combination of terms creating a unique or incongruous
meaning, then the resulting combination is also merely
descriptive. In re Tower Tech., 64 USPQ2d at 1317-1318.
B. Discussion
As noted, applicant seeks registration of the mark
ADNETWORK ADVISOR for
business information services, namely, providing
information about the purchasing habits of
particular consumers and organizations

in International Class 35, and
information services, namely, providing financial
information describing particular customers and
organizations,

in International Class 36.
The examining attorney has submitted dictionary
definitions of the following relevant terms:
Serial No. 77201284
4
ad
An advertisement

network
...
2 ... a. A system of lines or channels that cross
or interconnect: a network of railroads. b. A
complex, interconnected group or system: an
espionage network. c. An extended group of people
with similar interests or concerns who interact
and remain in informal contact for mutual
assistance or support.

THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed)
(www.bartleby.com (Sept. 22, 2007)).
ad·vis·er
...
1. one who gives advice.
...

Also, ad·vis·or.

RANDOM HOUSE UNABRIDGED DICTIONARY (2006) (Dictionary.com
Unabridged (v. 1.1) (Sept. 22, 2007)).
The examining attorney argues that
the proposed mark is merely descriptive of the
services because AD NETWORK is commonly used to
describe services featuring the provision of
information about consumers in the field of
advertising and business. In addition, the
wording ADVISOR is descriptive in the context of
applicant’s information services because the
services seek to advise consumers through the
business and financial information provided.
Applicant is providing advice about like-minded
groups for whom ads will be targeted.

Ex. Att. Br. at 4.
While applicant admits that the term “ad network” has a
specific meaning in the relevant industry, it disagrees that
Serial No. 77201284
5
the term is descriptive as applied to the identified
services. The following passage from applicant’s brief sums
up its disagreement with the examining attorney:
Applicant disagrees that the Internet
evidence shows that “ad network” is commonly used
in the business field to describe services, which
include connecting advertisers with consumers and
providing information about customers to
advertisers. While an ad network (advertising
network) may connect consumers with advertisers
and advertisers with consumers, it is not used to
represent the service of providing information
about consumers to advertisers. An “advertising
network” or “ad network” is used (but not
commonly) to refer to the business of connecting
web sites that want to host advertisements with
advertisers who want to run advertisements.

Applicant’s services do relate to providing
information and data about consumers, however,
Applicant’s services are not an ad network.
Applicant provides purchasing habit and financial
information of particular consumers to its
customers/clients.

App. Br. at 3.
The examining attorney has submitted material from the
Internet in support of her refusal to register. Several
pages of evidence are from the website of iMEDIA Connection
(“Connecting the Marketing Community”). From the evidence
of record, it appears that iMEDIA provides information on
third-party resources for others in the field of on-line
advertising. It is in this context that the term “Ad
Network” is used on iMEDIA’s web pages. The following is
extracted from several such pages:
Serial No. 77201284
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Serial No. 77201284
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www.imediaconnection.com/resourceconnection/companydetail
(Apr. 15, 2008).
The examining attorney also submitted an article on the
subject of customer retention through better customer data
collection including the following paragraph:
Your firm is probably already using some sort
of log analyzer and may subscribe to an ad network
such as Flycast. However, log analyzers, packet
sniffers, plug-ins, ad networks, and ad managers
report mainly on TCP/IP activity and not consumer
demographics, lifestyle, values, behavior and
attributes. In essence, they report on browser
activity, not individuals. Some of these tools do
provide valuable information about how visitors
found a site, what keywords and search engines
they used, how long they stayed, and so on, and
banner ad networks and ad managers can provide
some valuable insight into clickstream behavior.
Serial No. 77201284
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However, the bottom line is that these types of
tools provide little insight into consumer habits
and life-styles, which are what e-businesses need
to know in order to manage customer relationships.

Jesus Mena, Bringing Them Back, Intelligent Enterprise,
www.intelligententerprise.com/000717/feat2.jhtml (Apr. 15,
2008).
Finally, the examining attorney submitted a page from a
website which the examining attorney asserts is owned by
applicant.2 See http://targusinfo.com/about.aspx (Apr. 15,
2008). We are unable to give this evidence significant
weight. Assuming that it is indeed from applicant’s
website, the page makes no mention of the applied-for mark
and contains no reference to ad networks in general. (The
only apparent trademark used on the referenced web page is
“TARGUSinfo.”) But even if the services discussed on this
page meet the definition of an ad network, it is far from
clear that these are the services applicant intends to offer
under the ADNETWORK ADVISOR mark.
While the examining attorney and applicant differ to
some extent on the definition of the term “ad network,”
applicant admits that “an ad network (advertising network)
may connect consumers with advertisers and advertisers with

2 According to the application file, applicant is Targus
Information Corporation, located in Vienna Virginia. The
apparent publisher of the website is TARGUSinfo, which “is
headquartered in Vienna, Virginia.”
Serial No. 77201284
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consumers.... [Further, a]n ‘advertising network’ or ‘ad
network’ is used (but not commonly) to refer to the business
of connecting web sites that want to host advertisements
with advertisers who want to run advertisements.” App. Br.
at 3. Whatever else the term “ad network” may encompass,
applicant’s definition is generally consistent with how the
term is used in the evidence of record.
Nonetheless, applicant denies that “ad network” is used
“to represent the service of providing information about
consumers to advertisers.” Id. That may be so, but
applicant’s mark is not “ad network” alone, but ADNETWORK
ADVISOR.3 As the examining attorney’s dictionary definition
makes clear, an “advisor” is one who gives advice.
Considered as a whole, the clear meaning of applicant’s mark
is thus one who provides information for members or users of
ad networks. Applicant’s identified services consist of
providing various consumer-related information of particular
use to advertisers. Potential purchasers of such

3 We do not ignore the fact that the space between the words “ad”
and “network” are elided in applicant’s mark. Nonetheless,
deleting a space between two terms of a compound term generally
does not change the descriptive significance of the term. In re
Gould Paper Corp., 5 USPQ2d 1110, 1112 (Fed. Cir. 1987). Such is
the case here; applicant has simply combined two elements of a
descriptive term into one word, although each term is plainly
evident in the result, and no different commercial impression is
created thereby. Id. (“Nothing is left for speculation or
conjecture in the alleged trademark. The compound immediately
and unequivocally describes the purpose, function and nature of
the goods....”).
Serial No. 77201284
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information would clearly include those using ad networks
for on-line advertising.
II. Conclusion
After careful consideration of the record evidence and
argument, we conclude that applicant’s mark is merely
descriptive of a feature, function, or characteristic of
applicant’s identified services, namely, that it immediately
describes the services of providing information and advice
for users of ad networks.
Decision: The refusal to register under Trademark Act
§ 2(e)(1) is accordingly affirmed.