Boston Technology, Inc.

Trademark Trial and Appeal Board

Sep 28, 1999

No. 75025611 (T.T.A.B. Sep. 28, 1999)

Paper No. 19
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Boston Technology, Inc.
___________
Serial No. 75/025,611
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Gerald P. Joyce III of Staas, Halsey for applicant.
K. Margaret Le, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
____________
Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Boston Technology, Inc. has filed a trademark
application to register the mark ACCESSWEB for “computer
software for serving voice messages, video messages, fax
messages and e-mail messages using hypertext mark up
language on a global computer network and associated
hardware namely communications data switching equipment.”1

1 Serial No. 75/025,611, in International Class 9, filed November 29,
1995, based on an allegation of a bona fide intention to use the mark
in commerce.
Serial No. 75/025,611
2
The Trademark Examining Attorney has finally refused
registration, under Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not held.2 We reverse the refusal to register.
Both applicant and the Examining Attorney appear to
accept as facts that, in the context of computers and the
Internet, the term “Web” is a shorthand reference to the
World Wide Web; that “Web access” software is a type of
software that provides an interface between a user’s PC and
the World Wide Web3; and that applicant’s software, as
identified in the application and as described in the
applicant’s promotional material, is not “Web access”
software.
The Examining Attorney contends that applicant’s mark,
ACCESSWEB, is merely descriptive in connection with
applicant’s goods as identified in the application and as

2 While an oral hearing was requested and scheduled, a notation in the
file states that applicant’s attorney did not appear for the hearing
and, in a subsequent telephone conversation with the Board, waived
applicant’s right to a hearing and asked that the case proceed on the
briefs.
3 The Examining Attorney submitted excerpts from the LEXIS/NEXIS
database of numerous articles using the phrase “web access” to refer to
this type of software.
Serial No. 75/025,611
3
described above. She contends that the two terms
comprising the mark, ACCESS and WEB, are each merely
descriptive of applicant’s goods and, similarly, the
combined term, ACCESSWEB, is merely descriptive thereof.
The Examining Attorney submitted an excerpt from Newton’s
Telecom Dictionary (7th ed.) defining “access” as “[in] data
processing, access means to retrieve information from, or
store data in, memory or mass storage”; and an excerpt from
The Computer Glossary (7th ed.) indicating “Web” is
synonymous with “Worldwide Web” and is defined as “an
Internet service that links documents by providing
hypertext links from server to server … [and that] allows a
user to jump from document to related document no matter
where it is stored on the Internet.”
The Examining Attorney refers to applicant’s
promotional literature wherein applicant states:
The AccessWEB Internet Messaging Application
allows service providers to maintain their own
customized messaging “pages” on the Worldwide Web
(WWW). Using standard web browser software,
subscribers access the network operator’s Home
Page through normal Internet connections,
including commercial online services and Internet
Service Providers (ISP’s). WWW hypertext links
allow subscribers to rapidly navigate to their
unified mailbox.
The Examining Attorney contends that the ACCESS portion of
applicant’s mark merely describes the fact that
Serial No. 75/025,611
4
“applicant’s software allows the user to go to the web and
retrieve information and then store same on the home page
for the subscriber’s subsequent use”; and that the WEB
portion of applicant’s mark is merely descriptive because,
as applicant’s own literature advertises, it “links
documents by providing hypertext links from server to
server” and, thus, it is merely operating software for this
web service.
Applicant describes its software as follows:
In general, the ACCESSWEB Internet Messaging
Application allows a user to retrieve voice, fax
and e-mail messages from a specialized page on
the World Wide Web. In order to perform this
task, the end users need [to] have an Internet
(or Intranet) account and a Web browser, such as
the Netscape Communicator. By setting the
browser to a specific URL, the end user is able
to view a list of personal messages. Using a
Hypertext Mark Up Language (HTML) Interface, the
end user merely clicks on [a] representation of
his message to retrieve it. If the message is
text, the text is placed on the screen for the
end user to view, if the message is voice, a
sound file is played over speakers attached to
the user’s computer.
…
The end user described above is not the
prospective purchaser of the ACCESSWEB Internet
Messaging Application. What is being sold is not
the Web pages and access to messages to the end
user, but the software and hardware to enable the
purchaser of the ACCESSWEB product (such as local
phone providers) to provide said services to end
users.
Applicant explains, further, that its ACCESSWEB software
product can be used only in connection with other products
Serial No. 75/025,611
5
offered by applicant, such as its ACCESS NP services
platform; and that applicant has a line of products, the
names of which all contain the root word ACCESS.4
Applicant contends that “the important aspect of its
product is that it provides a unified presentation of
messages to a user” and neither the unified term ACCESSWEB,
nor the individual terms ACCESS and WEB, even remotely
suggest this characteristic. Applicant argues, further,
that the term ACCESS, either alone or in combination with
WEB, provides only a vague and incomplete suggestion of
access to something; that the mark ACCESSWEB is, at most,
suggestive of the identified goods; and that the mark
ACCESSWEB is not merely descriptive because it has at least
two possible meanings, one of which is clearly not merely
descriptive because it is inaccurate, i.e., the
misconception that applicant’s product is Web access
software.

4 Applicant contends that purchasers of its ACCESSWEB software must have
previously purchased, at least, applicant’s ACCESS NP platform and,
therefore, ACCESSWEB is not descriptive because relevant purchasers are
already familiar with the term ACCESS as indicating applicant as the
source of products and services. We find this argument to be
unpersuasive. First, this reasoning is circular (i.e., the mere fact
that applicant has other trademarks utilizing the term ACCESS does not
lead us to conclude that ACCESS is not merely descriptive in connection
with the goods herein). Further, applicant’s argument is essentially
an assertion of acquired distinctiveness, which is an issue not before
us.
Serial No. 75/025,611
6
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, contrary to applicant’s
contention, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Recovery, 196 USPQ 830 (TTAB 1977).
Based on applicant’s description of its identified
goods, both in its brief and in its promotional material,
we agree with applicant that, while ACCESSWEB may be
suggestive of the identified goods, it is not merely
descriptive thereof. Clearly, applicant’s product is not
Serial No. 75/025,611
7
web access software. With respect to web access software,
each of the Examining Attorney’s LEXIS/NEXIS excerpts uses
the exact phrase “web access,” with the words in this
particular order. While the word “Web” describes the
communications medium used in connection with applicant’s
software, applicant’s product is not part of the class of
products whose specific function is to provide access to
the Web. We find that the order of these two words in the
mark ACCESSWEB creates a significantly different commercial
impression from the phrase “Web access,” one that projects
a degree of ambiguity and incongruity. Thus, we find that
the Examining Attorney has not established on the record
before us that the mark ACCESSWEB is merely descriptive of
the identified goods.
Furthermore, we resolve in applicant’s behalf any
doubt that we may have and conclude that the mark should be
published for opposition. See, In re Rank Organization
Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases cited
therein.
Serial No. 75/025,611
8
Decision: The refusal under Section 2(e)(1) of the
Act is reversed.
E. J. Seeherman
C. E. Walters
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board