Warrantynet Corp.

Trademark Trial and Appeal Board

Sep 9, 2003

No. 76069748 (T.T.A.B. Sep. 9, 2003)

Mailed:
9/9/03
Paper No.18
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Warrantynet Corp.
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Serial No. 76/069,748
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James C. Wray, Esq. for Warrantynet Corp.
Boris Umanski, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 14, 2000, applicant, a Massachusetts
Corporation, filed the above-referenced application to
register the mark “WARRANTYNET” on the Principal Register
for the following goods and services:
on-line computer software for the registration,
purchase, sale, data mining, tracking, processing and
management of warranties and warranty-related
information and services for others for use on local,
wide area, global computer networks, namely extranets,
intranet, and the worldwide web;
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/069,748
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computer communications software to automate data
warehousing of the registration, purchase, sale,
tracking, data mining, processing and management of
warranties and warranty-related information for others
for use on local, wide area and global computer
networks, namely extranets, intranet, and the
worldwide web;
computer software for web application database
development, management and maintenance in the field
of warranties; computer software for optimizing the
business process and supply chain activities with
others in the field of warranties and warranty-related
services; and computer software to facilitate warranty
transactions via web-based appliances, all in
International Class 9; and
computer consultancy services in the area of computer
software, namely design, development and installation
of computer software for warranties, interactive
databases, namely on-line facilities for real time
interaction with other computer users, computer
bulletin and message boards for warranties; technical
support services; electronic transmission of data via
local, wide area and global computer networks, namely
extranets, intranet and the worldwide web in
International Class 42.
The application stated that applicant “has been by
itself or through a licensee or by a predecessor in title,
Business Interactive Corp., and through a licensee or by
itself and through a licensee since using the above-
referenced mark in international commerce between the
United States of America and Canada or in interstate
commerce” in connection with the goods and services listed
above. No dates of use or specimens of use of the mark
were provided, however.
Ser No. 76/069,748
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The original Examining Attorney1 refused registration
under Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(e)(1), on the ground that the term sought to be
registered is merely descriptive in connection with
warranty tracking network software and the electronic
transmission of warranty data over networks. He also held
that both the identification of goods and the recitation of
services were unacceptable, and suggested possible
acceptable identifications and recitations in International
Classes 9, 38 and 42. In addition, he advised applicant
that the basis for filing the application was not clear, in
that applicant appeared to have filed the application based
on actual use of the mark in commerce, but no dates of use
or specimens of use were provided.
Responsive to the first Office Action, applicant
amended the application to identify the goods and services
as follows:
computer e-commerce software to allow users to perform
electronic business transactions via a global computer
network in the field of warranties and warranty-
related information; computer software for the
browsing, comparison, registration, purchase, sale,
data mining, tracking, processing and management of
warranties and warranty-related information and
services for use on local, wide area, global computer
networks, in International Class 9;
1 After the first Office Action, this application was reassigned
to the Examining Attorney designated above.
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electronic transmission of messages and data;
providing online chat rooms for transmission of
messages among computer users concerning warranties,
providing online electronic bulletin boards for
transmission of messages among computer users
concerning warranties, in International Class 38; and
computer consultation services in the area of design,
development and installation of electronic commerce
applications, namely, shopping cart applications,
electronic marketplaces, purchasing agents, and
functionalities for the registration, browsing,
comparison, purchase, retail sale, processing and
management of warranties and warranty-related
information and services to be used in association
with online stores and interactive databases;
technical support services namely, troubleshooting of
computer hardware and software problems via telephone,
e-mail and in person, in International Class 42.
The appropriate fee was submitted to cover the additional
class of services.
In addition to making these amendments, applicant
argued that the refusal based on descriptiveness was not
well taken, and advised the Examining Attorney that the
basis for filing the application was Section 44 of the Act,
in view of an application which applicant had previously
filed in Canada. Applicant listed the Serial Number as
1,047,906, but did not provide either a copy or a filing
date for its Canadian application.
The Examining Attorney accepted the amendments to the
identification of goods and the recitation of services, but
maintained and made final the refusal to register under
Section 2(e)(1) of the Act based on mere descriptiveness.
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In support of this refusal to register, he made of record a
copy of an entry from an acronym dictionary which shows
that “NET” is an acronym for both “network” and “Internet.”
Also made of record with the second Office Action were
copies of dictionary definitions of “net” as a “computer
network”; of “network” as “a group or system of electronic
components and connecting circuitry designed to function in
a specific manner” and as “a system of computers
interconnected by telephone wires or other means in order
to share information.” This definition noted further that
a “network” is also called “net.”
The Examining Attorney noted that applicant had
claimed priority under Section 44(d) of the Act and advised
applicant that because applicant did not assert this basis
in the original application or within six months after
filing it, applicant could not claim this basis for filing
this application. The Examining Attorney again advised
applicant to assert a basis for filing, and suggested that
applicant could assert its intention to use the mark in
commerce as a proper basis. This requirement for a
properly asserted filing basis was maintained and made
final.
Applicant responded to the second Office Action with
additional argument against the refusal based on Section
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2(e)(1) of the Act. Additionally, applicant stated that it
had possessed a bona fide intention to use the mark in
commerce in connection with the specified goods and
services since the filing date of the application. A
supplemental response from applicant included a declaration
to this effect by applicant corporation’s “principal.” The
declaration stated that “[t]he applicant has had a bona
fide intention to use the mark in commerce or in connection
with the goods and services listed in the application since
the filing date of the application.”
Applicant timely filed a Notice of Appeal. The Board
instituted the appeal, but suspended action on it and
remanded the application to the Examining Attorney for
consideration of applicant’s supplemental response.
The Examining Attorney was not persuaded to withdraw
the refusal to register or the requirement for applicant to
state a proper basis for filing the application. Attached
to the Examining Attorney’s response were additional
exhibits. Copies of two pages from what appears to be
applicant’s web site, WarrantyNet.com, were submitted. The
material contains several statements. Applicant “provides
web-based warranty management solutions (composed of
software and services) to individuals, corporate buyers,
and the Warranty Supply Chain, e.g., warranty providers,
Ser No. 76/069,748
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manufacturers, retailers, service centers and insurers.”
Applicant “enables manufacturers, retailers and other
warranty providers to process online and off-line warranty
information for central electronic storage and processing,”
as well as helps retailers “to sell extended warranties and
provide better customer service.” Applicant “helps
warranty providers to transform warranty data into business
intelligence that may be used to market more effectively,
provide better customer service, reduce fraud, track repair
trends, and increase service revenue from extended
warranties….”
Also included with this Office Action were copies of a
number of third-party trademark registrations on the
Supplemental Register for marks which combine generic or
descriptive terminology with the terms “NET” or “.NET.”
Registration on the Supplemental Register indicates that
these marks are merely descriptive of the services with
which they are used. Examples of these marks include Reg.
No. 2,633,705 for “REPORT.NET” for “tracking and monitoring
insurance compliance and information and providing
information on insurance tracking and monitoring”; Reg. No.
2,404,945 for “EXPENSENET” for “computer software for use
in reporting, auditing, payment and archiving of employer
business expenses”; and Reg. No. 2,606,195 for “HRNET” for
Ser No. 76/069,748
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“information technology consulting services for businesses
relating to automation of human resources functions.”
Action on the appeal was resumed by the Board, and
both applicant and the Examining Attorney submitted appeal
briefs. The applicant also filed a reply brief, but did
not request an oral hearing.
There are two issues for our resolution in this
appeal: (1) whether “WARRANTYNET” is merely descriptive of
the goods and services specified in the application, as
amended, within the meaning of Section 2(e)(1) of the
Lanham Act; and (2) whether applicant has asserted a valid
basis for filing the application.
Based on careful consideration of the written record
in this application and the arguments presented by both
applicant and the Examining Attorney, we hold that the
refusal to register is well taken and that applicant has
failed to assert a valid basis for filing the application.
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Lanham Act, 15
U.S.C. Section 1052(e)(1), is well settled. A mark is
unregistrable under this section if it describes a
significant characteristic, function, feature, purpose or
use of the relevant goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed &
Ser No. 76/069,748
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Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986); and In re MetPath Inc., 223 USPQ 88 (TTAB 1984).
This determination must be made in relation to the
identified goods or services, rather than in the abstract.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). The question is whether a person who is
familiar with the goods or services will understand the
mark to convey significant information about them. In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990). The mark does not have to describe all of the
purposes, functions, characteristics or features of the
goods or services in order to be considered merely
descriptive of them within the meaning of the Trademark
Act. It is sufficient if the mark describes one attribute
or feature of them. In re MBAssociates, 180 USPQ 338 (TTAB
1973). A mark which combines two or more descriptive terms
may qualify for registration if the combination creates a
mark that is not descriptive. In re Putnam Publishing Co.,
39 USPQ2d 2021 (TTAB 1996). Unless the combination results
in a mark which has a separable, nondescriptive meaning,
however, the mark remains unregistrable under Section
2(e)(1).
In the instant case, applicant’s mark, “WARRANTYNET,”
is merely descriptive of the goods and services set forth
Ser No. 76/069,748
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in the application because it describes a feature or
characteristic of them, namely that applicant’s software
products and services all relate to warranties and are
provided by means of, or are used in conjunction with,
various networks, such as the Internet, LANs (local area
networks) and WANs (wide area networks). The above-quoted
passage from applicant’s website makes it clear that
applicant provides warranty management solutions by means
of software and services through computer networks.
Applicant promotes itself as an expert in designing,
implementing and operating “web-based warranty-related
services.” Accordingly, the mark applicant seeks to
register, which is a combination of the descriptive terms
“WARRANTY” and “NET,” is merely descriptive within the
meaning of the Act because it conveys the fact that
applicant provides warranty management solutions through
its network and Internet related goods and services. The
goods in Class 9 are software which facilitates warranty
transactions by means of networks; the services in Class 38
are essentially providing a network for transmission of
messages regarding warranties; and the services in Class 42
involve consulting with regard to the design of computer
networks which feature processing and management of
warranties and warranty-related information and services to
Ser No. 76/069,748
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be used in association with interactive databases, or
networks.
Applicant argues that the composite of the terms is
incongruous, ambiguous and unclear, such that in order to
glean the descriptive meaning from the term, consumers
would need to engage in complex thought processes or multi-
stage reasoning. This argument is unpersuasive, however.
This combination of two descriptive terms does not create
any incongruity. No imagination is required to understand
from the mark the nature of the goods and services
specified in the application. See In re Associated Theater
Clubs Co., 9 USPQ2d 1660 (TTAB 1988). Combining the word
“WARRANTY” with the term “NET” would not cause consumers to
fail to recognize the descriptive significance of each
term.
Applicant argues that if its mark were merely
descriptive, the Examining Attorney should have been able
to produce evidence that others in the field use it to
describe their own goods or services. Applicant asserts
that because no such evidence was made of record, and
because the proposed mark, in its composite form, does not
exist in the English language, the mark cannot be held to
be merely descriptive within the meaning of the Act. These
arguments are not persuasive. That applicant may be the
Ser No. 76/069,748
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first, or even the only, user of this descriptive
terminology does not justify registration. In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983). The fact that a term is not found in dictionaries
is not controlling on the issue of mere descriptiveness.
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987).
We thus turn to the second ground for refusing
registration in the case at hand. The application, as
originally filed, was unclear as to the basis for filing
it. Applicant was advised of this problem. Applicant’s
subsequent claim of priority under Section 44(d) of the Act
was improper because such a claim must be asserted within
six months from the date when the foreign application was
filed. Section 44(d)(1) of the Act and Trademark Rule
2.34(a)(4)(i). As noted above, applicant was advised of
this problem as well, and it provided a declaration
relating to its intent to use the mark in commerce. That
declaration reads as follows: “The applicant has had a bona
fide intention to use the mark in commerce or in connection
with the goods and services listed in the application since
the filing date of the application.” (Emphasis added).
The Examining Attorney made it clear that this declaration
was unacceptable, but that if any substitute declaration
Ser No. 76/069,748
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adding the word “on” before the word “or” were provided,
such a declaration would constitute an acceptable basis for
filing the application under Section 1(b).
Not only did applicant fail to correct this problem,
applicant did not even address it.
Because the Trademark Act and the Trademark Rules of
Practice require an applicant to include a statement of
what the basis is for filing the application and applicant
has failed to do so, the Examining Attorney’s requirement
for such a statement is entirely appropriate.
In summary, both refusals to register are proper.
The mark is merely descriptive of the goods and services
set forth in the application, as amended, because it
identifies significant characteristics or features of them.
Additionally, applicant has not provided a proper basis for
filing the application.
DECISION: Both refusals to register are affirmed as
to each of the classes of goods and services.