Zanova, Inc.

Trademark Trial and Appeal Board

Apr 30, 2001

No. 75519495 (T.T.A.B. Apr. 30, 2001)

4/30/01
Paper No. 25
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Zanova, Inc.1
________
Serial No. 75/519,495 and Serial No. 75/571,710
_______
Stacy L. Taylor of Foley & Lardner for Zanova, Inc.
M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Daniel Vavonese, Acting Managing Attorney).
_______
Before Quinn, Wendel and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Zanova, Inc. seeks to register ITOOL as a mark for
services identified as "computer services, namely,
providing custom services for web sites and design of web
1 By an assignment document recorded in the Office's Assignment
Branch at Reel 2150, Frame 397, each of the involved applications
was transferred from Interactive Document Systems, Inc. dba APPS
Software International to Zanova, Inc. Though the record
contains evidence of intermediate transfers, Assignment Branch
records do not. The issues on appeal do not, however, require us
to consider chain of title issues, if indeed there are any such
issues.
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/519,495 and Ser. No. 75/571,710
2
sites for others"2 and for goods identified as "computer
software for use in creating web pages."3 In each case
registration has been refused under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1). The Examining
Attorney's position is that, as ITOOL is used in connection
with applicant's services and as it will be used for
applicant's goods, the mark is and will be merely
descriptive of the goods and services.
When the Examining Attorney made the refusal final in
the '495 application, applicant appealed and filed its
brief on appeal. The Examining Attorney, in lieu of filing
a brief, requested and was granted a remand, which is
discussed below, and thereby introduced new evidence into
the record with an action that continued the final refusal.
In the interim, applicant had also appealed a final refusal
in the '710 application, but had not yet filed a brief.
Applicant sought and was granted consolidation of the two
appeals. Applicant filed a response to the Examining
Attorney's remand action in the '495 application, which the
Board accepted as a supplemental brief for the consolidated
2 Serial No. 75/519,495, filed July 15, 1998, based upon an
allegation of first use of the term on August 1, 1997 and first
use of the term in commerce on April 1, 1998.
3 Serial No. 75/571,710, filed October 16, 1998, based upon an
allegation of a bona fide intention to use the term in commerce.
Ser. No. 75/519,495 and Ser. No. 75/571,710
3
appeals.4 The Examining Attorney then filed a brief and
applicant filed a reply brief, each addressing both
appeals. Applicant did not request an oral hearing.
Examining Attorney's Earlier Request for Remand
Applicant's request for consolidation of the appeals
notes that applicant argued against the remand request in
the '495 application, but that "the request was nonetheless
granted." In fact, applicant's submission was not
associated with the file until after the remand had been
ordered. Nonetheless, we find the remand itself to have
been proper, although we have not considered all the
evidence introduced thereby.
Applicant argues that the evidence introduced on
remand "was available either during prosecution of the
application, or otherwise before Applicant's submission of
its appeal brief." Specifically, applicant argues that
information from its web site was "clearly available in an
equivalent form through Applicant's website during
prosecution"; that an article retrieved from the NEXIS
database and dated January 4, 2000 discusses "a fifth
version" of a software product, so that "[c]learly, the
4 As a result of this course of prosecution, applicant never
filed a separate main brief in the '710 application. We have
considered the arguments made in the main brief filed in the '495
application as equally applicable to the '710 application.
Ser. No. 75/519,495 and Ser. No. 75/571,710
4
product described existed through at least four previous
versions before January 4, 2000" (emphasis by applicant);
that other articles, which concern Apple Computer's iTools
service, were available before applicant's appeal brief was
filed; and that there is no indication that information
from an on-line acronym finder "was not accessible during
prosecution [and] Applicant submits that it very likely
was, in that the on-line dictionary from which the document
was obtained has been in existence for several years."
Taking each of these objections in turn, we note that
the information retrieved from applicant's web site was
retrieved during a search conducted on the same day the
Examining Attorney filed her request for remand. Moreover,
the specific material retrieved from the site consists of a
press release discussing an agreement between applicant and
one of its customers for the customer to utilize
applicant's goods or services. The date of the press
release--September 29, 1999--and the date of the Examining
Attorney's search that retrieved it, both are after the
date of the Examining Attorney's final refusal.
Accordingly, remand for introduction of this evidence was
appropriate. Applicant's vague and unsupported argument
that the evidence was available "in an equivalent form…
during prosecution" is not persuasive.
Ser. No. 75/519,495 and Ser. No. 75/571,710
5
In regard to the NEXIS article discussing a particular
software product of another party, applicant argues that
earlier versions of the product were previously available.
Again, however, the argument is without support. While the
article discusses version 5.0 of this product, it does not
state that it is the fifth version of the product and does
not divulge how many earlier versions, if any, existed.
Moreover, it is the NEXIS article that discusses this
product that the Examining Attorney sought to introduce on
remand. That article clearly is dated many months after
the Examining Attorney's final refusal. Likewise, all of
the other articles retrieved from NEXIS, including the
articles discussing Apple's iTools services, are dated
after the Examining Attorney's final refusal. Remand for
introduction of all of the articles retrieved from NEXIS
and attached to the request for remand was appropriate.
Finally, in regard to the on-line dictionary evidence
that ITOOLS is an acronym for "Integrated Technical Orders
On-Line System," applicant argues that it "very likely" was
available earlier, because the source "has been in
existence for several years." Again, the argument is vague
and without support. In any event, this evidence is
entirely irrelevant to the Examining Attorney's refusal to
register ITOOL as a mark for applicant's goods and
Ser. No. 75/519,495 and Ser. No. 75/571,710
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services, which clearly do not comprise an "Integrated
Technical Orders On-Line System."
In sum, we find the Examining Attorney's request for
remand proper and all the evidence that was attached
thereto has been considered. We note, however, that the
Office action that issued after remand was granted also
included articles retrieved from NEXIS that are dated after
the request for remand. The request for remand only sought
permission to introduce the evidence attached thereto. It
was improper for the Examining Attorney to introduce the
later items into the record. We have not considered any of
the evidence attached to the remand action that was not
included with the request for remand.
The Record
The Office bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
(When the Examining Attorney sets forth a prima facie case,
the applicant cannot simply criticize the absence of
additional evidence supporting the refusal, but must come
forward with evidence supporting its argument for
registration.). To meet the Office's burden, the Examining
Attorney has made of record excerpts of five articles
Ser. No. 75/519,495 and Ser. No. 75/571,710
7
retrieved from NEXIS which reference ITool, ITools, and
iTools; an on-line dictionary definition of "Internet";
evidence from an on-line acronym finder which shows that
"I" can mean, among other things, "Internet"; excerpts of
articles retrieved from NEXIS which explain that "I" or "i"
as used in certain composite terms or domain names is
intended to mean "Internet"; a computer dictionary
definition of "tool"5; computer dictionary definitions of
"e-mail" and "chat room"; many NEXIS references which use
"Internet tools" or "Internet tool" in a descriptive
fashion; copies of various press releases from applicant's
web site which discuss its product and service; numerous
NEXIS article excerpts discussing Apple Computer's iTools,
a suite of Internet services available to Apple computer
users at Apple's web site; and an InfoWorld Daily News
article retrieved from NEXIS which discusses iTools
software products of Tenon Intersystems, Inc.
Applicant, in the response to the remand action, which
the Board has accepted as a supplemental brief, introduced
5 "(1) A program used for software development or system
maintenance. Virtually any program or utility that helps
programmers or users develop applications or maintain their
computers can be called a tool. …"
In the '495 application, the definition came from a
traditional, printed dictionary. In the '710 application, the
same definition was introduced but was retrieved from an on-line
dictionary.
Ser. No. 75/519,495 and Ser. No. 75/571,710
8
copies of web pages from Apple.com, which include
references to Apple's iTools. With its reply brief,
applicant sought to introduce printouts from the Office's
Trademark Applications and Registrations Retrieval (TARR)
system regarding certain pending applications and issued
registrations. In support of its request that this
evidence be considered, applicant argues that either the
registrations issued after it filed its response to the
remand action or the "pertinence [of this evidence] became
clear" only as a result of "the different focus of the
arguments made in the Examining Attorney's present brief on
appeal." In the alternative, applicant requests that the
applications be remanded so this evidence can be
considered.
We do not find consideration of applicant's proffered
TARR reports appropriate. By attempting to introduce
evidence with its reply brief, applicant has effectively
shielded this material from review and response by the
Examining Attorney. Moreover, we do not perceive any
significant shift in the Examining Attorney's appeal brief
arguments, when compared to those presented in the various
Office actions. We do not find applicant's request for
remand an appropriate alternative, primarily because it is
well settled that third-party applications and
Ser. No. 75/519,495 and Ser. No. 75/571,710
9
registrations are rarely probative in regard to the
question of registrability presented by an application on
appeal and each case is to be taken on its own merits. See
In re Pennzoil Products Co., 20 USPQ2d 1753, 1758 (TTAB
1991); and In re Inter-State Oil Co., Inc., 219 USPQ 1229,
1231 (TTAB 1983). Moreover, creation of the record to be
considered in an ex parte appeal must, at some point, be
concluded. Accordingly, we have not considered the
evidence submitted with the reply brief and deny the
alternative request for remand so that the Examining
Attorney can consider this evidence.6 We now turn to the
arguments.
Arguments Presented
Initially, based on five article excerpts retrieved
from NEXIS, the Examining Attorney argued that "'Itools'
appears to refer to a type of software for developing web
sites for others." The Examining Attorney therefore
6 We add that consideration of this evidence would, in any event,
not change our decision. Applicant seeks to introduce Office
records regarding applications and registrations to establish
only that, in some instances, Examining Attorneys have approved
for publication, rather than refused, certain marks. It is well
settled, however, that the Examining Attorney who reviewed
applicant's application is not bound by decisions of others on
different marks, which decisions presumably were based on
different records. Likewise, the Board is not bound by the
decisions in those cases and must render an independent decision
based on the record before us.
Ser. No. 75/519,495 and Ser. No. 75/571,710
10
refused registration on the theory that, as used and
intended to be used by applicant, ITOOL is and will be
merely descriptive of applicant's goods and of "the type of
software used by applicant to provide its services."
Subsequently, the Examining Attorney adopted the position
that the letter "I" is equivalent to "Internet," when used
on or in connection with applicant's goods and services;
that "tool(s)" is descriptive of the nature of the software
applicant intends to market and which it uses to provide
its services; that "Internet tool(s)" is a commonly used
descriptive phrase for a wide variety of Internet software;
and that consumers of applicant's goods or services would
readily perceive ITOOL as a shorthand version of the phrase
Internet tools.
Applicant argues, in regard to its services, that
applicant hosts its customers' web sites, provides a wide
variety of services in conjunction with the hosting, and
"[t]he iTool [sic] service is not simply a web site
development tool." In regard to its goods, applicant
argues that ITOOL is not descriptive and that its product
"allows users… to create an Internet site. ITOOL is not an
Internet tool. Rather, the mark ITOOL is suggestive of the
software. The 'I' reference suggests to consumers that the
product they are licensing relates to the Internet [and]
Ser. No. 75/519,495 and Ser. No. 75/571,710
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'Tool' suggests to consumers that the product provides some
means to assist the user but does not describe the product,
for example as would the name 'web site creator.'" In its
main brief, applicant expressly concedes the Examining
Attorney's arguments that "I" is an abbreviation for
"Internet" and that "tool" can mean "a program used for
software development or system maintenance." Nonetheless,
applicant argues that ITOOL is a coined term; that the term
is suggestive and requires consumers to use imagination to
determine what applicant's goods and services are; that the
numerous references evidencing use of "Internet tools"
"proves nothing"; that the Examining Attorney failed to
introduce a dictionary definition of ITOOL "because one
does not exist" and that this "indicates that the mark is
suggestive"; and that the NEXIS evidence reveals "exactly
one descriptive use of ITOOL" in a magazine article and
this "single, solitary use by a journalist is not
sufficient evidence" that the term is descriptive or needed
by competitors to describe their products. In addition,
focusing on some of the Examining Attorney's NEXIS
evidence, applicant argues that "every use of the 'i'
prefix to connote 'internet'… is as part of a trademark…."
(emphasis by applicant); that purchasers of computer and
Internet products "assign trademark significance to terms
Ser. No. 75/519,495 and Ser. No. 75/571,710
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composed of the prefix 'i' coupled to a descriptive term";
that such combinations can be registrable if, when taken as
a whole, they are ambiguous, incongruous or susceptible of
another meaning than that which an Examining Attorney would
ascribe; and that neither the "tool" element of ITOOL or
the composite is descriptive.
Decision
It is, of course, well settled that the question
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or services
and the possible significance that the term would have to
the average purchaser or user of the goods or services.
See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979)
and In re Recovery, 196 USPQ 830 (TTAB 1977).
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, 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-
Ser. No. 75/519,495 and Ser. No. 75/571,710
13
218 (CCPA 1978); see also In re Gyulay, supra. 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 thereof; rather, it is sufficient if the
term describes a significant attribute or idea about them.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Thus, it is not necessary, in this instance, 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 ITOOL to be
found merely descriptive.
From the record it is clear that "Internet tool(s)" is
a commonly used term and can refer to a wide variety of
computer programs or program-based services relating to the
Internet. For example, a July 1, 1999 Computer Shopper
article discusses an application program called WordPro
which includes an entire toolbar for accessing various
"Internet Tools"; a June 21, 1999 article from Computer
Reseller News discusses an entire business unit of Symantec
Corp. devoted to "Internet tools"; a June 21, 1999 article
from Newsbytes recites that "Internet tools and content
from portal site Lycos Inc. [NASDAQ:LCOS] will be
integrated into a new version of Lotus Development Corp.'s
Notes R5 groupware software."; a June 8, 1999 article in PC
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Magazine discusses a "feature-rich version of [the] Unix"
operating system that "gives you superb Internet tools";
and a May 25, 1999 announcement in the San Diego Union-
Tribune reads, in pertinent part: "Get an overview of the
Internet and learn the steps to getting connected to and
expanding your business on the Internet. Demonstrations of
Internet tools and process also included."
Applicant argues, however, that its goods and services
are different from those "Internet tools" discussed in the
Examining Attorney's evidence and that "the evidence of
record does not show any descriptive use of the term 'tool'
which applies in the context of Applicant's particular
goods and services." We find this argument particularly
disingenuous in view of press releases posted on
applicant's own web site, and in the record before us,
which include the following statements:
The private label iTOOL product enables any
company to expand its product offerings by
providing powerful online web site development
and hosting tools through the Internet.
Located at www.itool.com, this complete business
solution features a diverse set of tools than can
accommodate novice PC and Internet users as well
as the most experienced developers.
iTOOL.COM's mission is about visualizing the
future of web development and offering the most
complete and advanced set of Internet tools that
provide everyday business solutions.
Ser. No. 75/519,495 and Ser. No. 75/571,710
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In short, it is abundantly clear that the term
"Internet tools" not only describes a wide array of
software and related services, but also aptly describes
applicant's goods and services. Likewise, the evidence
demonstrates that the term "tool" itself is, contrary to
applicant's argument, also descriptive of applicant's goods
and services. Thus, the question we are left with is
whether, as applicant contends, the combination of "I" and
"TOOL" creates a registrable composite. We find that it
does not.
As noted above, we find the evidence of record
sufficient to establish that "tool(s)" is descriptive of
applicant's goods and services. Moreover, applicant
concedes that "I" or "i" can mean "Internet." Applicant
correctly distinguishes some of the Examining Attorney's
initial proffer of NEXIS evidence as including articles
wherein the "I" or "i" prefix may be evocative of terms
other than "Internet." The differences in connotation,
however, result from consideration of those references to
ITool, ITools, and iTools in conjunction with the specific
goods discussed in each article. When we consider the
possible significance of "I" in ITOOL to prospective
purchasers of applicant's goods or services, we find that
they will readily accept "I" as meaning "Internet," and the
Ser. No. 75/519,495 and Ser. No. 75/571,710
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NEXIS references applicant has distinguished do not suggest
otherwise.
Applicant is correct in its observation that terms
which, when considered individually, are descriptive of a
product or service may, nonetheless, be combined to create
a trademark. We disagree, however, with applicant's
conclusion that ITOOL is suggestive and find that the
designation "I" and the term "tool," when combined, are no
less descriptive than they are individually. See, e.g., In
re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (combination
of SCREEN FAX PHONE held merely descriptive and without
incongruity resulting from combination), and In re Lowrance
Electronics, 14 USPQ2d 1251 (TTAB 1989) (generic terms
COMPUTER and SONAR held just as generic and not incongruous
when used in combination).
The fact that ITOOL does not appear in a dictionary is
not determinative. See In re Orleans Wines Ltd., 196 USPQ
516 (TTAB 1977). Likewise, the fact that applicant may be
the first and/or one of the few entities using the term is
not dispositive where, as here, the term unequivocally
projects a merely descriptive connotation. See In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Moreover,
contrary to applicant's argument that there is no need for
its competitors to use "ITOOL" or variations thereof, we
Ser. No. 75/519,495 and Ser. No. 75/571,710
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find the evidence establishes that there are competitors
doing exactly that.
We note, in this regard, the December 16, 1996 Edge:
Work-Group Computing Report retrieved from NEXIS and which
recites that "[a] full complement of marketing Itools,
including product reports, chat groups, e-mail, technical
support areas, technology publications, research and even
online events will be available on technologynet.com." We
also note the many NEXIS references to Apple Computer's use
of "iTools" for software-based services Apple makes
available at its web site, including web-based e-mail,
parental filtering software, online file storage and web
site building and hosting. Finally, we note the January 4,
2000 InfoWorld Daily News article which reflects use of
iTools by Tenon Intersystems Inc. for a software product
featuring "a host of … Internet tools" and with versions
for Apache Web servers running on Apple operating systems
and for Linux-based servers.
Applicant contends that Apple's use is as a trademark,
rather than as a shorthand reference to "Internet tools,"
but has presented no evidence in support of the argument.
The Apple web pages introduced by applicant include no
claim that the iTools is viewed by Apple as a trademark;
nor did applicant introduce evidence of any applications or
Ser. No. 75/519,495 and Ser. No. 75/571,710
18
registrations evidencing a claim by Apple that iTools is
its trademark. Likewise, we are not persuaded by
applicant's argument that Tenon's use is "as the brand name
of Tenon's Apple iTools ancillary products, not as a
descriptive term." Applicant infers that Tenon's use of
the term iTools for a software product used on web servers
which also use an Apple operating system is somehow
authorized or approved by Apple. The argument fails
because it presumes that iTools is an Apple mark and, as
noted, we have no evidence to support this presumption.
Finally, Tenon's apparent use of iTools for web servers
that run on the Linux operating system, rather than an
Apple system, runs counter to applicant's theory.7
In sum, we find that prospective purchasers of
applicant's goods or services, if confronted with ITOOL
used in conjunction therewith, would, without need of
thought, imagination or perception, be immediately apprised
of the nature of applicant's goods and services, i.e., that
its software is an "Internet tool" that allows users to
create a web page and its services involve using such tool
to design web pages for others.
7 The article discussing Tenon's products lists a web site for
Tenon. Applicant has not introduced any evidence from that web
site to support its argument that Tenon either claims use of
iTools as a brand name of its own or uses it by authorization
from Apple.
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Decision: The refusal of registration is affirmed.