Cochran

Trademark Trial and Appeal BoardFeb 12, 2009

No. 78897985 (T.T.A.B. Feb. 12, 2009)

Mailed: February 12, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cochran ________ Serial No. 78897985 _______ Eugenia S. Hansen of Hemingway & Hansen, L.L.P. for R. Keith Cochran. James T. Griffin, Trademark Examining Attorney, Law Office 104 (Michael Hamilton, Managing Attorney). _______ Before Bucher, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: R. Keith Cochran (“applicant”) filed an intent-to-use application to register the mark MANAGED AUDIT, in standard character form, for “computer software for corporate taxpayers to manage federal, state and other regulatory audit processes,” in Class 9. The Trademark Examining Attorney refused to register applicant’s mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground that applicant’s mark is merely descriptive. According to the Examining Attorney, MANAGED AUDIT is merely descriptive THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78897985 2 because it “describes the purpose and use of the software, i.e., that it is used by a business in the course of a managed audit.”1 To support the descriptiveness refusal, the Examining Attorney submitted the following evidence: 1. An excerpt from the website of the Texas Comptroller of Public Accounts (cpa.state.tx) regarding the “Managed Audit Program,” June 2002. The website reports that the state legislature authorized “certain taxpayers to perform managed audits under the supervision of the Comptroller.” The excerpt also referenced the “Managed Audit Procedures for Taxpayers” and the “Managed Audit Plan.” 2. An excerpt from the website of the Washington Department of Revenue (http://dor.wa.gov) regarding its “Managed Audit Program.” According to Washington State, a “managed audit” “is a contract between the DOR and your business. It allows you to perform some, or all, of the audit functions.” 3. An excerpt from the website of LeMaster & Daniels PLLC referencing information regarding “‘Managed’ sales tax audit.” A managed audit is described as follows: Essentially, a managed sales tax audit pushes the audit function onto the business while limiting the state auditor’s time to review plan development and high-level review. In turn, businesses have the option to participate in a managed audit – which can be attractive because of the reduction of penalty and, in some states, interest. 1 Examining Attorney’s Brief, unnumbered page 2. Serial No. 78897985 3 4. Information from the state of New Mexico regarding its managed audits (tax.state.nm.us). New Mexico defines as managed audit as follows: A managed audit is a variation on a traditional field audit used by the New Mexico Taxation and Revenue Department (NMTRD). A managed audit allows taxpayers to conduct an audit on themselves as specified in a signed managed audit agreement between the Secretary or the Secretary’s delegate (“the Secretary”) and the taxpayer or the taxpayer’s authorized representative (“the taxpayer”). On the other hand, applicant contends that the mark MANAGED AUDIT is not merely descriptive because “[w]hen one considers the mark MANAGED AUDIT, one would not immediately conclude that the nature of the goods is computer software. . . . a person hearing or reading ‘MANAGED AUDIT’ would not immediately conclude that the mark is even referring to goods rather than a method or process (e.g., a service) which further indicates that the mark does not immediately convey what, in connection with, the mark is intended to be used.”2 In other words, a person viewing applicant’s mark would not be able to ascertain the nature of applicant’s goods.3 2 Applicant’s Brief, p. 5. 3 Applicant’s Brief, p. 8. Serial No. 78897985 4 Applicant explains that MANAGED AUDIT is suggestive because the “software is a tool for taxpayers to use; it does not conduct an audit.”4 Appellant’s software product is a tool that might be used by a taxpayer or its financial/accounting employees to more easily organize, track or perform various functions or portions of work that might need to be done for various accounting purposes that a business might find useful. Appellant’s product is neither a “managed audit” per se, nor can it “perform” a managed audit.5 (Emphasis in the original). A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is not whether someone presented only with the mark could guess what the products are. Rather, the question is whether someone who knows what the 4 Applicant’s Brief, p. 10. 5 Applicant’s Brief, p. 9. Serial No. 78897985 5 products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316- 1317 (TTAB 2002); In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). Accordingly, we start our analysis of the registrability of MANAGED AUDIT by inquiring whether that term describes a characteristic, quality, function or purpose of applicant’s products, not whether we can guess what the products are or the purpose of the products just by looking at the mark. Thus, applicant’s contention that no one would be able ascertain the nature of applicant’s goods by merely viewing the term MANAGED AUDIT is not the test. Serial No. 78897985 6 A “managed audit” is a term of art referring to a self-audit. See the above-noted evidence submitted by the Examining Attorney. That evidence shows the term “managed audit” is used unambiguously in connection with a self- auditing tax process (e.g., Texas authorized “certain taxpayers to perform managed audits,” Washington State provides that a “managed audit” “allows you to perform some, or all, of the audit functions”). Because applicant’s mark is proposed for use in connection with software “to manage federal, state and other regulatory audit processes,” it encompasses software that may be used for a “managed audit.” Thus, the term “managed audit” describes an “audit process” for which applicant’s software may be used. Interestingly, applicant asserted that its software is “a tool to assist in the handling of information.”6 Such information may include “federal, state and other regulatory audit processes.” Accordingly, the term MANAGED AUDIT immediately and unequivocally describes a characteristic or feature applicant’s software (i.e., it may used in connection with a “managed audit”). In view of the foregoing, we find that the term MANAGED AUDIT when used in connection with “computer software for corporate taxpayers to manage federal, state 6 Applicant’s Brief, pp. 9-10. Serial No. 78897985 7 and other regulatory audit processes” is merely descriptive. Decision: The refusal to register is affirmed.