Thales UK Limited

Trademark Trial and Appeal Board

Feb 20, 2020

79235918 (T.T.A.B. Feb. 20, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
_____

In re Thales UK Limited
_____

Serial No. 79235918
_____

Scott J. Major of Millen White Zelano & Branigan PC,
for Thales UK Limited.
Ronald McMorrow, Trademark Examining Attorney, Law Office 118,
Michael Baird, Managing Attorney.
_____

Before Pologeorgis, Larkin, and Johnson,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Thales UK Limited (“Applicant”) seeks registration on the Principal Register of
the standard character mark DIGITAL CREW for the following goods and services,
as amended:
Artificial intelligence software for analyzing and classifying animate
and inanimate objects captured in images; computer hardware for
software for analyzing and classifying animate and inanimate objects
captured in images; software incorporating artificial intelligence for
enhancing situational awareness and alerting; artificial intelligence
software for operational command and control of vehicles, aircraft,
watercraft, weaponry, military hardware and devices and non-military
hardware devices; software for operating opto-electronic devices;
software solutions for situational awareness and decision support;
computer software and computer hardware for recording, detecting,
managing, analyzing and providing insights into images, videos and
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data; computer software and computer hardware for recording,
detecting, managing, analyzing and providing insights into images,
videos and data in video management systems, surveillance systems,
security cameras, sensors, security, and operations systems; military
hardware control software; data processing software for use in analyzing
and classifying images; software for detecting targets for weaponry;
software for processing images for the purposes of their analysis and
classification; sensor data processing software; data processing software
for use in defense and security fields; computer hardware and software
for interpreting data from sensors to provide activity event notifications
and alerts and generate activity event reports; computer software and
computer hardware for video surveillance, data analytics, and
operational intelligence; computer software for data management,
analysis, interpretation, identification, reporting, and decision support
related to recorded and non-recorded voice, video and radio; computer
software to enable situation planning, response and analysis; computer
software for data management, analysis, interpretation, identification,
real-time analytics, decision-making, agent guidance and process
automation in response to the analyzing and classifying of animate and
inanimate objects captured in images, in International Class 9;

Training services, namely, training in the use and applications of
artificial intelligence software and hardware, and information, advice
and consultancy services relating thereto, in International Class 41; and

Software as a service [SaaS], namely, artificial intelligence SaaS for
analyzing and classifying animate and inanimate objects captured in
images; computer software consultancy; consulting services in the field
of design, selection, implementation and use of computer hardware and
software systems for others; consultancy in the design and development
of software and hardware for image processing and recognition and
situation awareness and decision support; information, advice and
consultancy services relating to all of the foregoing, in International
Class 42.1

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s

1 Application Serial No. 79235918, filed on March 21, 2018, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), requesting an extension of protection based on
Applicant's International Registration No. 1411235 registered on March 21, 2018.

Serial No. 79235918
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failure to comply with the requirement to disclaim DIGITAL because it is merely
descriptive of Applicant’s identified goods and services within the meaning of Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and is thus an unregistrable
component of the mark.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The appeal is fully briefed. We affirm the
refusal to register.2
I. Disclaimer Requirement - Applicable Law
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C.
§ 1056(a). A “disclaimer” is a statement that an applicant does not claim exclusive
rights to an unregistrable component of a mark:
[A] disclaimer of a component of a composite mark amounts merely to a
statement that, in so far as that particular registration is concerned, no
rights are being asserted in the disclaimed component standing alone,
but rights are asserted in the composite; and the particular registration
represents only such rights as flow from the use of the composite mark.

Sprague Elec. Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm'r Pats. 1954).
Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1), 15
U.S.C. § 1052(e)(1), and therefore are subject to disclaimer if the mark is otherwise

2 All TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
Serial No. 79235918
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registrable. Failure to comply with a disclaimer requirement is grounds for refusal of
registration. In re Omaha Nat'l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re
National Presto Indus. Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool
Indus. Inc., 157 USPQ 114 (TTAB 1968).
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574,
1575 (Fed. Cir. 2015). The determination of whether a portion of a mark is merely
descriptive must be made in relation to the goods or services for which registration is
sought, not in the abstract. Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82
USPQ2d at 1831. This requires consideration of the context in which the term is used
or intended to be used in connection with those goods and services, and the possible
significance that the term would have to the average purchaser of the goods and
services in the marketplace. Chamber of Commerce, 102 USPQ2d at 1219; Bayer, 82
USPQ2d at 1831; Omaha Nat'l Corp., 2 USPQ2d 1859. In other words, the question
is not whether someone presented only with the mark could guess the goods or
services identified in an application. Rather, the question is whether someone who
knows what the goods or services are will understand the mark to convey information
about them. DuoProSS Meditech Corp. v. Invira Med. Devices, Ltd., 695 F.3d 1247,
Serial No. 79235918
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103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978). In addition, it is not necessary, in order to find a mark
or term merely descriptive, that the mark or term describe each feature of the goods
or services, only that it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods or services. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Sterotaxis, 77 USPQ2d at
1089); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Evidence that a
term is merely descriptive to the relevant purchasing public “may be obtained from
any competent source, such as dictionaries, newspapers, or surveys.” Bayer, 82
USPQ2d at 1831 (quoting In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ
818, 819 (Fed. Cir. 1986)).
II. Analysis
The Examining Attorney asserts that the term DIGITAL, as used in Applicant’s
mark and in the context of the identified goods and services, immediately informs
consumers of a significant feature or purpose of such goods and services, namely, the
term refers to the field of use of the goods and the subject matter of the services.3
As evidentiary support, the Examining Attorney submitted a dictionary definition
of the term DIGITAL which is defined as follows:
• Relating to, using or storing data or information in the form of digital
signals;
• Involving or relating to the use of computer technology.4

3 Examining Attorney’s Brief p. 6, 9 TTABVUE 7.
4 July 9, 2018 Office Action, TSDR pp. 6-7 (www.oxforddictionaries.com).
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The Examining Attorney also submitted the following Internet evidence
demonstrating that the term DIGITAL is commonly used to describe goods or services
that employ computer technology.5
www.softwareag.com – “Ready for Digital Transformation? Digital
Transformation Consulting – Let us build your Digital Transformation roadmap
and design your entire digitization architecture.”

www.accenture.com – “Don’t Follow Digital Trends. Start Them. Using advanced
digital technologies to transform businesses’ core operations, their workers and
customer experiences and ultimately their business models.”

www.arrowdigital.com – “our team blends digital strategy, technological
expertise, and platform strategy together to achieve your goals on the web or
custom tailored software.”

www.cognizant.com – “How do you better compete in the digital economy? By
understanding what your customers want and delivering it to them at record
speed. … We’re expanding our digital engineering capabilities with the
acquisition of Softvision to create one of the world’s top software product
development powerhouses. … In the digital economy, the advantage goes to the
company that can deliver high-value software the fastest.”

Additionally, the Examining Attorney submitted over 20 live, third-party
registrations for marks that include the term DIGITAL used in connection with
computer-related goods or services and where the word DIGITAL has been
disclaimed.6
Finally, the Examining Attorney submitted several live, third-party registrations
for various goods and services that are comprised of a descriptive term combined with

5 November 25, 2018 Office Action, TSDR pp. 5-27.
6 November 25, 2018 Office Action, TSDR pp. 28-41; June 9, 2019 Denial of Request for
Reconsideration, TSDR pp. 7-50, 54-56, 59-60, 64-81, 88-94, 97-107, 113-118, 124-126, and
129-137.
Serial No. 79235918
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the word CREW. In each instance, the descriptive term is disclaimed. The registered
marks are identified below:7
• Reg. No. 4587410 for the mark CLOUD CREW includes a disclaimer
of CLOUD.
• Reg. No. 4624089 for the mark BEAUTY CREW includes a
disclaimer of BEAUTY.
• Reg. No. 4734962 for the mark RECYCLING CREW includes a
disclaimer of RECYCLING.
• Reg. No. 5025693 for the mark CREW PARKING includes a
disclaimer of PARKING.
• Reg. No. 5207355 for the mark HITCH CREW includes a disclaimer
of HITCH.
• Reg. No. 5207355 for the mark COIL CREW includes a disclaimer of
COIL.
• Reg. No. 5384388 for the mark THE SOCK CREW includes a
disclaimer of SOCK.
• Reg. No. 5463735 for the mark PIZZA CREW includes a disclaimer
of PIZZA.
• Reg. No. 5566770 for the mark MAKEUP CREW includes a
disclaimer of MAKEUP.
• Reg. No. 5390589 for the mark TIRE CREW includes a disclaimer of
TIRE.
• Reg. No. 5716448 for the mark CANNIBIS CREW includes a
disclaimer of CANNIBIS.

In traversing the refusal, Applicant does not dispute that the term DIGITAL,
when considered apart from its involved mark, is nondistinctive as applied to its
goods and services.8 Nevertheless, Applicant maintains that its involved DIGITAL
CREW mark is an indivisible, unitary composite mark resulting from the inherent
incongruity of its constituent terms.9 More specifically, Applicant contends that “the

7 June 9, 2019 Denial of Request for Reconsideration, TSDR pp. 51-53, 57-58, 61-63, 82-87,
95-96, 108-112, 119-123, and 127-128.
8 Applicant’s Appeal Brief, p. 1, 7 TTABVUE 2.
9 Id.
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mark is unitary because DIGITAL cannot literally describe CREW; the latter refers
to a group of humans, while the definition of record for the former is ‘involving or
relating to the use of computer technology.’”10 Stated simply, Applicant argues that
“a group of humans” cannot be digital. In this sense, Applicant asserts that its
involved mark is not dissimilar to the URBAN SAFARI mark that is referenced in
Section 1213.05(d) of the TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) as
an example of a unitary mark that is comprised of an incongruous combination of
terms.
We are not persuaded by Applicant’s argument. Whether or not a mark is unitary
is a factual determination. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1397
(Fed. Cir. 2006). As explained in Dena Corp. v. Belvedere Int’l, Inc., 950 F. 2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991):
A unitary mark has certain observable characteristics. Specifically, its
elements are inseparable. In a unitary mark, these observable
characteristics must combine to show that the mark has a distinct
meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and
distinct commercial impression.

Ultimately, the “test for unitariness requires the Board to determine ‘how the
average purchaser would encounter the mark under normal marketing of such goods
[or services] and also ... what the reaction of the average purchaser would be to this
display of the mark.”’ Dena Corp., 21 USPQ2d at 1052 (quoting In re Magic Muffler

10 Id. In support of its argument, Applicant submitted the dictionary definition of the term
CREW which is defined as “a group of persons involved in a particular kind of work or
working together.” November 6, 2018 Response to Office Action, TSDR p. 9
(www.dictionary.com based on the Random House Unabridged Dictionary).
Serial No. 79235918
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Serv., Inc., 184 USPQ 125, 126 (TTAB 1974)). In other words, in determining whether
or not a mark is unitary we must focus on whether the elements of a mark are so
integrated or merged together that they cannot be regarded as separable. See In re
Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983); TMEP §1213.05. However, if the
elements are considered separable, the matter is not unitary and the unregistrable
constituent elements may be disclaimed. See In re Ginc UK Ltd., 90 USPQ2d 1472,
1477 (TTAB 2007); In re Brown-Forman Corp., 81 USPQ2d 1284, 1288 (TTAB 2006);
TMEP §1213.05(b)(iv), (g), and (g)(i).
A mark may be unitary where it is, inter alia, (1) a slogan that is not itself merely
descriptive, (2) a double entendre, or (3) composed of sound patterns such as
alliteration and rhyming. See TMEP §§ 1213.05(b)(i), 1213.05(c), and 1213.05(e).
Here, Applicant does not argue, nor do we find, that its involved mark is (1) a
slogan, (2) comprised of alliterating or rhyming elements, or (3) a mark constituting
a double entendre. Instead, Applicant’s sole argument throughout the prosecution of
its application has been that the applied-for mark “is an indivisible, unitary
composite resulting from the inherent incongruity of the constituent terms.”
Specifically, Applicant repeatedly compares its applied-for mark to the above-
referenced mark URBAN SAFARI.
We disagree. Two words combine to create incongruity if they are not compatible
or consistent with one another. Since it would not be possible to have a SAFARI in an
URBAN area, the terms create incongruity when combined. The combination of the
terms DIGITAL and CREW, however, creates no such incongruity. It is entirely
Serial No. 79235918
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possible and common for a “crew” of people to provide goods and services in the
“digital” field. Indeed, the public is familiar with the suggestive term “crew” being
used with a descriptive/generic term that identifies the field of the services they are
providing, e.g., road crew, electrical crew, flight crew, etc. Thus, relevant consumers
encountering the mark DIGITAL CREW in the context of Applicant’s identified
computer-related goods and services would immediately perceive the mark as two
separate components with the DIGITAL component identifying the field of use of the
goods and the subject matter of the services. That is, the merely descriptive
significance of the term DIGITAL is not lost in the mark as a whole. In re RiseSmart
Inc., 104 USPQ2d 1931, 1934 (TTAB 2012).
In sum, the record supports a finding that the word DIGITAL is merely descriptive
when used in connection with Applicant’s identified goods and services. Applicant
concedes as much. Specifically, the record demonstrates that the word DIGITAL
clearly and unambiguously describes a significant feature or characteristic of the
identified goods and services, namely, goods or services that employ computer
technology. The combination of the terms DIGITAL and CREW does not create an
incongruous mark.
Decision: The refusal to register Applicant’s DIGITAL CREW mark based on the
requirement, made under Trademark Act § 6(a), for a disclaimer of the term DIGITAL
is affirmed. However, this decision will be set aside if Applicant submits the required
disclaimer to the Board within 30 days from the date of this decision. Trademark Rule
2.142(g), 37 C.F.R. § 2.142(g); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
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PROCEDURE (TBMP) § 1218 (2019). The disclaimer should read as follows: “No claim
is made to the exclusive right to use DIGITAL apart from the mark as shown.” TMEP
§ 1213.08(a)(i).