DesignYour-Course.com, LLC d/b/a Syllabi Solutions

Trademark Trial and Appeal BoardSep 18, 2017

No. 86748430 (T.T.A.B. Sep. 18, 2017)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 18, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DesignYourCourse.com, LLC d/b/a Syllabi Solutions _____ Serial No. 86748430 _____ Claire Zopf of Z IP Law PLLC for DesignYourCourse.com, LLC d/b/a Syllabi Solutions. Sandra Snabb, Trademark Examining Attorney, Law Office 120 (David Miller, Managing Attorney). _____ Before Cataldo, Adlin and Pologeorgis, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: DesignYourCourse.com, LLC d/b/a Syllabi Solutions (“Applicant”) seeks a Principal Register registration for the proposed mark SYLLABI SOLUTIONS, in standard characters, for: Design, development, and implementation of software for the development of educational courses that align course outcomes and course learning objectives with core and specialized course competencies and the development of course summaries and compliance reports used for course approval and accreditation of any type of educational institution or training within an organization; Software as a service (SAAS) services featuring software for the development of educational courses that align course outcomes and course learning objectives with core and Serial No. 86748430 2 specialized course competencies and the development of course summaries and compliance reports used for course approval and accreditation of any type of educational institution or training within an organization.1 The Examining Attorney refused registration on the ground that Applicant’s proposed mark is merely descriptive of the identified services under Section 2(e)(1) of the Act. After the refusal became final, Applicant appealed and filed a request for reconsideration which was denied. Applicant and the Examining Attorney filed briefs. A mark is merely descriptive, within the meaning of Section 2(e)(1), if it immediately conveys knowledge of a quality, feature, function, characteristic or purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009)); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and every specific feature of the services in order to be considered merely descriptive; rather, it is sufficient that the mark describes one significant attribute, function or property of the services. In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in the abstract, but in relation to the services 1 Application Serial No. 86748430, filed September 4, 2015 under Section 1(b) of the Trademark Act, based on Applicant’s alleged bona fide intent to use the mark in commerce. The evidence reveals that the mark is currently in use, but Applicant has not filed an allegation of use. Serial No. 86748430 3 for which registration is sought, the context in which it is being used on or in connection with the services, and the possible significance that the mark would have to the average purchaser of the services because of the manner of its use. In re Bright- Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the services, the combination results in a composite that is itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents, and for tracking the status of the records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In re Tower Tech, 64 USPQ2d at 1314 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) Serial No. 86748430 4 (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). Here, the Examining Attorney relies on the following dictionary definitions of the proposed mark’s constituent terms: SYLLABUS (plural syllabi)—“a summary or outline, esp. of a course of study”2 SOLUTION (plural solutions)— “an action or process of solving a problem”3 “products or services designed to meet a particular need”4 “Cataloging a vendor’s hardware and software offerings by industry or application. ‘Solutions’ has become such a marketing buzzword that many vendors tout only solutions on their Web sites, having eliminated reference to their products and services ….”5 Office Actions of January 4 and July 22, 2016. These definitions establish that SYLLABI SOLUTIONS conveys a process, product or service, perhaps hardware or software-based, which is intended to meet needs or solve problems associated with summaries or outlines of courses of study. 2 http://www.yourdictionary.com/syllabus 3 http://www.merriam-webster.com/dictionary/solution 4 http://www.oxforddictionaries.com/us/definition/american_english/solution?q=solutions 5 http://encyclopedia2.thefreedictionary.com/solutions Serial No. 86748430 5 The Examining Attorney also relies on Applicant’s “Syllabi Solutions Fact Sheet,” which Applicant provided in response to a request for information under Trademark Rule 2.61(b). According to the Fact Sheet: Syllabi Solutions places all universities and colleges in the United States on a level playing field by serving as their in- house specialized curriculum development team which assists administrators, department chairs, college professors and others to build the course curriculum. Syllabi Solutions efficiently makes each professor an accomplished competency based course developer, capable of developing a course that will meet the demands of accrediting agencies as if they had their own specialized in house or out-sourced development group. Syllabi Solutions is a user-friendly computer-based platform for the higher education industry including research and comprehensive universities, liberal arts colleges, and community colleges. The Syllabi Solutions web portal allows stakeholders to collaborate and comment on the course development process in real time saving time and money in an era where many higher education institutions are struggling with budget deficits. Syllabi Solutions vision of Your Curriculum/Out Technology frees the college professor from the need to acquire specialized computer skills to consistently and efficiently prepare course curriculum which are aligned with the educational institution’s core and specialized competencies. The college professor no longer needs a high level of computer skills to produce quality curriculum for their students. Syllabi Solutions delivers the technology leaving the college professor with more time to teach their students. Serial No. 86748430 6 Office Action response of July 2, 2016 (emphasis added). Thus, the Fact Sheet corroborates the dictionary evidence, in that it specifically confirms that Applicant’s services assist professors and others in creating course syllabi, via a “computer-based platform,” including a “web portal.” Applicant’s services “free” professors “from the need to acquire specialized computer skills to consistently and efficiently prepare course curriculum.” In other words, SYLLABI SOLUTIONS describes Applicant’s computer-related services, including software as a service, which help professors and institutions develop and manage syllabi and related issues, such as “the demands of accrediting agencies.” The nature and purpose of Applicant’s software development and implementation services, and software as a service activities, is further explained in its U.S. Patent No. 62046194 entitled “Method and Apparatus for the Development of Competency Based Educational Courses and Curriculum.” Office Action of July 22, 2016. The patent’s abstract indicates that course and curriculum development is accomplished “using a secure web based server computer platform and software application … The course development software program provides a course syllabus ….” Id. (emphasis added). The claims include: 8. The competency based educational course development system implemented as a software application on a computer system of claim 1 comprising a module design interface that transforms, integrates and modularizes transactional data from the course development software application to develop, display, and modify a course syllabus. 9. The competency based educational course development system implemented as a software application on a Serial No. 86748430 7 computer system of claim 8 wherein the course development software application transforms transactional data to integrate the course information and course syllabus with a learning management system of an educational institution. Id. (emphasis added). The patent’s “Background of the Invention” section states: For the majority of universities and colleges in the United States, educational course development remains a challenging, expensive and time-consuming process often requiring repetitive hands-on involvement by college professors, department chairs, deans, and administrators. Only a fortunate number of educational institutions can afford to have specialized in-house curriculum development groups work with college professors and handle much of the development process … While appropriate course development is critical for an educational institution to demonstrate with evidence that it meets the requirements of accreditation, the process of substantiating this can be a huge task for an educator with each professor required to substantiate and document their course work in order to provide the necessary work product of the accreditation process …. Id. And according to the patent’s “field of the invention” description: The present invention is a method and apparatus for the development of educational courses and curriculum using a secure web based server computer platform and software application that aligns course outcomes and course learning objectives with core and specialized course competencies and uniquely develops course summary and compliance reports that may be used for course approval and accreditation of any type of educational institution or training within an organization. The course development software program further provides a course syllabus that includes presentation summaries, textbook information, video, test and other course materials and assignments for a teacher to easily organize and present daily activities for the classroom. Id. Serial No. 86748430 8 In other words, according to Applicant’s descriptions in its patent, its services include delivering and implementing a computer-based solution to syllabi-related problems. In fact, Applicant itself uses the term “solution” in the patent’s Detailed Description of the Invention, stating “[i]n each context, the invention may stand alone or may be a component of a larger system solution,” and that the system performs functions “that support an integrated educational system solution that aligns competencies with the desired student outcomes and learning objectives.” Id. (emphasis added). See In re Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the term ERGONOMIC … highlights the descriptive nature of this term …”). Applicant’s third party competitors use the term SOLUTIONS similarly. Specifically, a syllabus-related computer program called CONCOURSE “allows you to upload existing syllabi to your custom-themed syllabus solution. Simply put, it’s (sic) complete syllabus management in way less time, money, and technology. Generate comprehensive reports based on syllabus content in your department or even your entire institution.” Office Action of July 22, 2016 (printout from “intellidemia.com”) (emphasis added). In fact, SOLUTIONS appears to have a well-understood meaning when used by software as a service providers. The Examining Attorney has introduced more than 50 registrations containing the term SOLUTIONS for software as a service services such as Applicant’s, or closely analogous services, albeit usually in fields unrelated to syllabi, in which the term is disclaimed, registered on the Principal Register with a Serial No. 86748430 9 claim of acquired distinctiveness or registered on the Supplemental Register, including: Mark Registration No. Relevant Goods/Services Disclaimer/ 2(f)Claim/ Supplemental Register MIPS SOLUTIONS 5134804 Providing online, non- downloadable software that enables users to upload data and reports to be used in connection with data analytics related to the provision of medical and healthcare services … Supplemental WAITING ROOM SOLUTIONS 3896025 Providing web-based Software as a Service application for creating, maintaining and accessing medical records … 2(f) entire mark SOLUTIONS disclaimed E EQUATOR FINANCIAL SOLUTIONS & Design 3839212 Software as a service (SAAS) services featuring software for use in automating and optimizing workflow operations, transactional data processing … FINANCIAL SOLUTIONS disclaimed HEALTH ACCESS SOLUTIONS & Design 3866701 Software as a service (SAAS) services, namely, hosting software for use by others for use by medical practitioners, healthcare providers … 2(f) entire mark KÖRBER HITEC SOLUTIONS 4953374 Software as a service (SAAS), namely, software for use in gathering, recording, storing, analyzing and evaluating data relating to tobacco processing and cigarette manufacturing and packaging … SOLUTIONS disclaimed Serial No. 86748430 10 OMNIVIEW SOLUTIONS & Design 3957784 Software as a service (SAAS) services featuring software for monitoring workflow, performance, and compliance with a dashboard providing business intelligence to businesses in the deathcare and healthcare fields SOLUTIONS disclaimed TRUST SOLUTIONS 4777369 Software as a service (SAAS) services featuring software for secure electronic transactions and authentication of digital signatures in electronic transactions and communications SOLUTIONS disclaimed INFORMATION TRANSPORT SOLUTIONS 4255976 computer service, namely, acting as an application service provider in the field of information management to host computer application software for the purpose of education and management SOLUTIONS disclaimed APERIA SOLUTIONS & Design 4076784 SAAS, namely, hosting software for use by others for online analytical processing, data and text mining … SOLUTIONS disclaimed Office Action of February 8, 2017. Where a term is disclaimed, registered on the Supplemental Register or registered with a claim of acquired distinctiveness, that is evidence that the term has been found descriptive. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1762 (TTAB 2013), aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014) and Bass Pro Trademarks LLC v. Sportsman’s Warehouse Serial No. 86748430 11 Inc. 89 USPQ2d 1844, 1851 (TTAB 2008) (disclaimers); Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (where “an applicant seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive”); Otter Products LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255-56 (TTAB 2012); Perma Ceram Enterprises Inc. v. Preco Indus., Ltd., 23 USPQ2d 1134, 1137 n.11 (TTAB 1992) (Supplemental Register registrations). In fact, we have previously relied on third-party registrations such as those in this case to find SOLUTIONS merely descriptive, stating “in the context of computer goods, SOLUTIONS is a term that is used to describe the purpose of the computer to resolve a problem.” In re Box Solutions Corp., 79 USPQ2d 1953, 1956 (TTAB 2006). The same is true of Applicant’s computer services, especially because the services involve software, such as Applicant’s software as a service services. The third-party registrations “show the meaning of a mark in the same way that dictionaries are used.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95; see also, The Institut National des Appellations D’Origine v. Vintners International Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services”) and Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USQ2d 1458, 1471 (TTAB 2014). Here, the third-party uses and registrations show Serial No. 86748430 12 that SOLUTIONS reveals something about computer-related services, specifically that they enable users to resolve problems. In this case, the problems to be solved all relate to SYLLABI. Applicant argues that its proposed mark is not merely descriptive because it “uses alliteration.” 9 TTABVUE 7. We are not persuaded. Applicant has “failed to cite any evidence, and the record contains none, supporting its view that the alliteration in [SYLLABI SOLUTIONS] creates a commercial impression that is more than merely descriptive.” DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F.3d 12147, 103 USPQ2d 1753, 1758-59 (Fed. Cir. 2012); see also In re Lean Line, Inc., 229 USPQ 781, 782-83 (TTAB 1986) (“there is nothing in the record to suggest that the mere fact that both words which form the mark begin with the letter ‘L’ would cause purchasers to miss the merely descriptive significance of the term ‘LEAN’ or consider the entire mark to be a unitary expression”). Applicant also argues that its proposed mark creates an “incongruity” because “the term ‘solutions’ has no logical relationship whatsoever to educational courses or to syllabi.” 9 TTABVUE 7. We disagree. There is no incongruity, because as the third- party registrations and other evidence shows, SOLUTIONS has a logical, known relationship to Applicant’s software as a service and other identified services. For example, the third-party registrations in which SOLUTIONS was found to be merely descriptive include WAITING ROOM SOLUTIONS and HEALTH ACCESS SOLUTIONS for healthcare-related software services, INTEGRATED HOUSING SOLUTIONS for housing-related software services, DRIVERS ED SOLUTIONS for Serial No. 86748430 13 drivers education-related software services, VOTENET SOLUTIONS for election- related software services, WORKFORCE BENEFIT SOLUTIONS for employee benefit-related software services and many others. The evidence also shows that SOLUTIONS has been used in connection with syllabi specifically, as promotional material indicates that the third-party Concourse computer program “allows you to upload existing syllabi to your custom-themed syllabus solution.” Office Action of July 22, 2016 (printout from “intellidemia.com”). Other evidence reveals that Applicant’s competitors offer computer-related services in the field of syllabi, so there is no incongruity in Applicant’s use of SOLUTIONS in connection with syllabi: Serial No. 86748430 14 Office Action of July 22, 2016 (printouts from “onlinelearningconsortium.org” and “creatixcampus.com”). These third-party registrations and uses belie Applicant’s argument that multistage reasoning is required to determine the nature of Applicant’s services. In any event, Applicant itself essentially concedes that there is no incongruity, because it concedes that SOLUTIONS should be disclaimed, i.e. that it is merely descriptive of Applicant’s services. 9 TTABVUE 14-15. While Applicant also takes the position that its proposed mark is entitled to registration on the Principal Register with a disclaimer of SOLUTIONS, we disagree. In most of the third-party registrations of record which are registered on the Principal Register with a disclaimer of the word SOLUTIONS only, the word preceding SOLUTIONS is at worst suggestive. Here, however, Applicant’s mark is more like the third-party Serial No. 86748430 15 registrations on the Supplemental Register, or those on the Principal Register which include Section 2(f) claims with respect to the entire mark, such as WAITING ROOM SOLUTIONS (Reg. No. 3896025), HEALTH ACCESS SOLUTIONS (Reg. No. 3866701), INTEGRATED HOUSING SOLUTIONS (Reg. No. 4554137), DECISIONING SOLUTIONS (Reg. No. 4496408), DRIVERS ED SOLUTIONS (Reg. No. 4496456), WORKFORCE BENEFIT SOLUTIONS (Reg. No. 4753609), WORK TRUCK SOLUTIONS (Reg. No. 4938752) and VIRTUAL TICKET SOLUTIONS (Reg. No. 4966665). Office Action of February 8, 2017.6 In short, when the terms “syllabi” and “solutions” are combined “the mark as a whole, i.e., the combination of the individual parts,” does not convey “any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” In re Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a prospective purchaser or user” of Applicant’s software services in the field of educational courses, “because … the combination of the terms does not result in a composite that alters the meaning of [any] of the elements … refusal on the ground of descriptiveness is appropriate.” In re Petroglyph Games, 91 USPQ2d at 1341. 6 In any event, to the extent there are third-party marks on the Principal Register without a Section 2(f) claim which are analogous to Applicant’s mark, and which have a disclaimer only as to SOLUTIONS, that does not justify registration of Applicant’s merely descriptive mark on the Principal Register without a Section 2(f) claim. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits … Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”) (internal citation omitted). Serial No. 86748430 16 Indeed, the evidence makes clear that consumers who know that Applicant’s services involve educational course software and related services will understand the proposed mark to convey information about them, specifically that they help resolve issues and problems related to syllabi. Decision: The refusal to register Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act is affirmed.