Vital Processing Services, L.L.C.

Trademark Trial and Appeal Board

Jun 26, 2001

No. 75547155 (T.T.A.B. Jun. 26, 2001)

06/26/01
Hearing: Paper No. 16
March 13, 2001 RLS/JMP
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vital Processing Services, L.L.C.
________
Serial No. 75/547,155
_______
Ina J. Risman of Heller, Ehrman, White & McAuliffe, LLP for
Vital Processing Services, L.L.C.
Andy Corea, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney)
_______
Before Simms, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Vital Processing Services, L.L.C. (applicant) has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark VIRTUALNET for providing
financial information by electronic means.1 The Examining
Attorney has refused registration under Section 2(e)(1) of
the Act, 15 USC §1052(e)(1), on the basis that applicant’s
1 Application Ser. No. 75/547,155, filed September 3, 1998, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/547,155
2
mark merely describes a feature or manner by which
applicant’s services are provided. Applicant and the
Examining Attorney have submitted briefs and an oral
hearing was held.
We reverse.
Relying upon dictionary definitions and excerpts from
the Nexis computer search system, the Examining Attorney
argues that applicant’s mark is equivalent to the
expression VIRTUAL NETWORK, because the word “virtual” is
commonly used with respect to computers and “net” is a
common shortened form of the word “network.” Given the
association between “virtual” and computers, the Examining
Attorney argues that when consumers encounter applicant’s
mark VIRTUALNET used in connection with its services, they
are likely to consider the term “NET” in applicant’s mark
as referring to a computer network, and they will see
applicant’s mark as a whole as identifying a type of
computer network or the mode of delivery of applicant’s
services -- a virtual network.
The Examining Attorney has relied upon a definition of
“network” meaning “An interconnected group of networks (an
Internet) that appear as one large network to the user.
Optionally, or perhaps ideally, a virtual network can be
centrally managed and controlled.” The Examining Attorney
Ser. No. 75/547,155
3
contends that the fact that the term “net” has other
meanings in other contexts is not persuasive. In further
support of his position that the mark is descriptive of
applicant’s services provided via the Internet (or virtual
network), the Examining Attorney has relied upon the
following excerpts, among others:
… The project will connect all the hospitals in
the state, via an intranet-based virtual network
to a central statewide health care database.
The Washington Times, October 12, 1998
* * * * * * * * *
Another area of help for new business owners is
the virtual network, a place to communicate with
other new business owners…
The Washington Times, April 6, 1998
* * * * * * * * *
At that time, Voyager was creating a virtual
network for associations that would supply
industry-related information and Internet access
for their memberships.
Grand Rapids Business Journal, December 22, 1997
* * * * * * * * *
Science-fiction author William Gibson adapted the
term in 1984 to describe a virtual network:
cyberspace.
San Antonio Express-News, March 24, 1996
* * * * * * * * *
…connecting LANs, businesspeople helped create an
electronic highway, a collection of networks
linked to form one large virtual network.
Business Journal-San Jose, September 18, 1995
* * * * * * * * *
As copyright issues continue to be examined in
connection with the “virtual networks” created by
the very existence of the Internet and as
commercial on-line services proliferate and
Ser. No. 75/547,155
4
expand their membership, one policy question to
be faced is whether…
New York Law Journal, July 21, 1995
* * * * * * * * *
In fact, Rutkowski refers to the Internet as a
“virtual network,” because much of it exists by
piggybacking on “underlying networks—-every
conceivable kind of electronic transport
network”…
The Fresno Bee, November 14, 1994
* * * * * * * * *
The Examining Attorney has also made of record third-
party registrations containing disclaimers of the words
“VIRTUAL NETWORK” in an attempt to show the descriptiveness
of applicant’s mark.
Applicant, on the other hand, maintains that its mark
is suggestive because imagination and thought are required
to understand the relationship between applicant’s
financial information services and the mark sought to be
registered. Applicant states that it does not have a
virtual network of computers, but rather offers a bundle of
financial services delivered by the Internet. These
services are designed to enable electronic commerce, and
they include such services as payment card processing
services, credit authorization, payment and settlement
services, storage of cardholder information and fraud
monitoring services, all offered to merchants and financial
institutions. While applicant acknowledges that its
Ser. No. 75/547,155
5
services are offered over the Internet, and that its mark
may suggest that its services are somehow related to
computers, it is applicant’s position that a mark is not
merely descriptive unless it describes a significant aspect
or feature of the services. In this regard, applicant
argues that the possible incidental suggestion of the means
or mode of delivery of applicant’s financial information
services is not a significant feature of applicant’s
services. Moreover, even if applicant’s mark VIRTUALNET is
interpreted as “VIRTUAL NETWORK,” the latter word
signifying the Internet, it is nevertheless too vague and
broad an expression to be considered merely descriptive of
applicant’s services, according to applicant. In other
words, applicant argues that, to the extent its mark may be
incidentally descriptive of the means by which applicant
delivers its services, this meaning is too broad to be held
merely descriptive.
Applicant also points to a declaration of record
indicating that its mark was chosen to convey the idea of a
bundle or “net” of related financial information services
offered online. Further, applicant’s mark, according to
applicant, plays on various meanings of “net”, including
that its services may catch, capture or “net” financial
data. Applicant also points to other meanings of the term
Ser. No. 75/547,155
6
“NET” in its mark. This range of suggestive meanings,
applicant maintains, renders its mark suggestive, not
merely descriptive.
While conceding that if applicant’s services were
telecommunications or networking services, the mark may be
merely descriptive, applicant points out that it offers a
range of financial information services by electronic
means. Applicant also argues that registration would not
deprive competitors of the use of the descriptive term
“virtual network.” Applicant emphasizes that its mark is
VIRTUALNET, not “VIRTUAL NETWORK,” and that it is
inappropriate for the Examining Attorney to convert
applicant’s mark into “VIRTUAL NETWORK” and then to argue
that its mark means the Internet.
A proposed mark is merely descriptive of goods or
services if it immediately describes an ingredient,
quality, characteristic or feature thereof, or if it
directly conveys information regarding the nature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). In this regard, it is not necessary that a
term describe all of the properties or functions of the
goods or services in order for it to be merely descriptive.
It is sufficient that the term describes a significant
Ser. No. 75/547,155
7
attribute or idea about them. In re Venture Landing
Associates, 226 USPQ 285 (TTAB 1985). Thus, it is not
necessary that a prospective purchaser of applicant’s goods
or services be immediately apprised of the full panoply of
features of applicant’s goods or services for the term to
be found merely descriptive.
Upon careful consideration of this record and the
arguments of the attorneys, it is our judgment that
applicant’s mark VIRTUALNET does not merely describe
applicant’s financial information services rendered by
electronic means. Even interpreting applicant’s
description of services to include the providing of these
services over the Internet, we agree with applicant that
imagination and thought are required to discern the
possible descriptive significance of applicant’s mark.
That is to say, some thought and imagination are necessary
to transform applicant’s mark into “VIRTUAL NETWORK,” and
then to conclude that this mark merely describes
applicant’s financial information services offered by
electronic means, including the Internet. VIRTUALNET used
in connection with electronic financial information
services is at most suggestive of these services. Further,
if we have doubt about the mere descriptiveness of a mark
sought to be registered, that doubt must be resolved in
Ser. No. 75/547,155
8
favor of publication. Upon publication, an interested
party who believes that applicant’s mark is merely
descriptive will have the opportunity to oppose
registration, perhaps from a better position in the trade
to demonstrate mere descriptiveness than the Examining
Attorney.
Decision: The refusal of registration is reversed.
Ser. No. 75/547,155
9
Bucher, Administrative Trademark Judge, dissenting:
As correctly noted by the majority, “[a]pplicant
states that it does not have a virtual network of
computers… .” (p. 4, supra). Yet, applicant’s position
seems to depend upon a strained distinction between
applicant’s “financial services” (where reliance on the
Internet and other computer networks, applicant argues, is
“incidental,” “insignificant” or “unimportant”), and third
parties’ “telecommunications services” (where applicant
concedes that the term VIRTUALNET might well be merely
descriptive).
In this regard, applicant’s Executive Vice President,
Donna L. Embry, states in her affidavit:
4. As is clear from the Vital website,
http://www.vitalps.com, Applicant corporation has
actively promoted a suite of payment processing
services under the VIRTUALNET mark.
With applicant having opened this Website for further
inspection, we asked trademark counsel at the oral hearing
before this Board to explain the following document:2
Transaction Processing Interface Specifications
VirtualNet
Internet Commerce Gateway
2 Vital Processing Services, LLC, November 22, 2000
Transaction Processing Interface Specifications, VirtualNet,
Version 0011,
http://www.vitalps.com/sections/int/int_Interfacespecs.html.
Ser. No. 75/547,155
10
• TCP/IP3 Virtual Private Network
• SSL (Secure Sockets Layer)

… The Vital VirtualNet IP Gateway provides merchants the ability to
process real-time credit card transactions from the Internet… .
The VirtualNet IP Gateway only works with full TCP/IP sessions…
Counsel was unable to explain to my satisfaction the
prominence of the Internet, a focus on this particular
Internet gateway, and the importance of Internet Protocol
(IP) throughout this twenty-six-page document. The
Internet and applicant’s “Virtual Private Network” are
front and center – not just an “incidental mode of
delivery.” Rather, as the above excerpts show, one must
conclude that the Internet and other related computer
networks are indeed significant components of applicant’s
“providing financial information by electronic means.”
Further, nowhere in this long document do we see a
single suggestion that the “net” suffix in this mark may
serve as a reference to “bundling” financial services, to
“capturing” relevant financial data, or to enhancing
merchants’ “net” profits, etc.
Moreover, applicant has argued throughout the
prosecution of this application that the Trademark
Examining Attorney has improperly “dissected” applicant’s
mark. I disagree. Rather, the Trademark Examining
3 TCP/IP (Transmission Control Protocol/Internet Protocol).
Ser. No. 75/547,155
11
Attorney has correctly shown that to those familiar with
the “net,” “VirtualNet” (or “virtual net”) is clearly a
frequently used, exact shorthand expression for “virtual
network.”4 Then in order to close the circle on this
analysis, I note that applicant’s own Website shows that
the recited services are totally reliant upon the Internet
to create the security and reliability that applicant’s
touts for its own “virtual private network.”
Applicant argues that “VIRTUALNET is a clever mark
that plays on the many different connotations of the word
‘net.’”5 Yet applicant’s own use of the term in context
ensures that the prospective customers’ “first reaction,”
“second reaction” and even “third reaction” to this term
will be that of a “virtual network.” Accordingly, I
disagree with applicant and with the majority on this
point, and I would affirm the instant refusal to register.
In conclusion, I must admit that I find applicant’s
arguments herein to be even more clever than its choice of
marks.
4 Cf. In re Abcor Development Corp., supra at 219 (Rich, J.,
concurring) [term “GASBADGE” held merely descriptive of a device
to determine and monitor pollution, because “users of language
have a universal habit of shortening full names,” and hence it is
“inevitable that a gas monitoring badge will be called a gas
badge as the name of the goods to the same extent as gas
monitoring badge is the [full] name” of such goods].
5 Applicant’s appeal brief, p. 12.