Equinix, Inc.

Trademark Trial and Appeal Board

Jul 15, 2002

No. 75831673 (T.T.A.B. Jul. 15, 2002)

Mailed: July 15, 2002
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Equinix, Inc.
________
Serial No. 75/831,673
_______
Michael W. Hicks of Blakely, Sokoloff, Taylor & Zafman, LLP
for Equinix, Inc.
Elissa Garber Kon, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Cissel, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 26, 1999, Equinix, Inc. (a Delaware
corporation) filed an application to register the mark
INTERNET BUSINESS EXCHANGE on the Principal Register for
services amended to read “providing multiple user access to
a global communication network featuring the provision of
unlimited and unrestricted interconnection among the
Internet Service Providers (ISPs), content providers,
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/831673
2
carriers and Component Service Providers (CSPs)” in
International Class 38. Applicant disclaimed the term
“Internet.” The application is based on applicant’s
claimed date of first use and first use in commerce of May
26, 1999.
The Examining Attorney refused registration on the
ground that applicant’s mark, INTERNET BUSINESS EXCHANGE,
is merely descriptive of applicant’s services under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs1; an oral hearing was not requested.
The Examining Attorney contends that the term
“Internet” is the generic term which tells consumers the
involved services are available on or facilitate use of the
global computer network; and that in the context of
applicant’s services, “Business Exchange” is widely used
across an array of industries to identify the service of
providing interconnectivity to businesses in order to allow
them to conduct business to business (or “B2B”) commerce,
or put another way, the mark immediately tells consumers
1 Applicant’s motion (filed March 8, 2002) to extend its time to
file a reply brief is granted, and we have considered applicant’s
reply brief.
Ser. No. 75/831673
3
the function of this online exchange, which is to
facilitate the conducting of Internet business.
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definitions from The American Heritage Dictionary (Third
Edition 1992):
(1) “Internet” is defined as “a matrix
of networks that connects
computers around the world,” and
(2) “exchange” is defined as “a place
where things are exchanged.”
The Examining Attorney also submitted (i) copies of
several third-party registrations to show that the words
“Internet,” “exchange” and “business exchange” have each
been disclaimed or registered on the Supplemental Register
when the word(s) was part of a mark for products or
services involving the exchange of business information;
(ii) copies of numerous excerpted stories retrieved from
the Nexis database to show how applicant and others use the
words “Internet business exchange” and “online business
exchange” to describe the services that facilitate the
exchange of e-commerce and business to business on the
Internet, (i.e., related interconnectivity services); and
(iii) certain pages printed from applicant’s website as
evidence that applicant itself uses the word “exchange” to
Ser. No. 75/831673
4
tell consumers that applicant provides an electronic
traffic exchange for their Internet business.
Applicant argues that the mark INTERNET BUSINESS
EXCHANGE is a coined and unitary expression which is
incongruous and at most suggests something about the nature
of applicant’s services, but has no precise meaning in the
context of applicant’s identified services; that the term
“exchange,” when considered as part of the entire mark,
“conveys a vague, nebulous notion of Applicant’s services”
(brief, p. 7), but the words taken together do not have any
readily identifiable meaning; that registration of
applicant’s mark will not deprive competitors of the right
to use the words “Internet,” “business” or “exchange”; that
those considering the mark, taken as a whole, would have to
engage in mental gymnastics in order to ascertain the
purpose, function or characteristics of applicant’s
services; that the Examining Attorney’s Nexis evidence
includes uses which are references to applicant; and that
the Examining Attorney has not demonstrated that
applicant’s mark is merely descriptive of applicant’s
services.
Applicant specifically argued the following:
The term INTERNET BUSINESS EXCHANGE in
its entirety does not have a readily
identifiable meaning. In fact, the
Ser. No. 75/831673
5
combination of the literal definitions
of each of the three individual
elements of the Applicant’s mark
demonstrates the mark’s incongruity, as
the combination of the three elements
creates a term with no readily conveyed
meaning or understanding. The
Applicant’s mark, while it may vaguely
suggest an image of, among other
things, a type of on-line commercial
activity, the reality of the present
case is that INTERNET BUSINESS EXCHANGE
is not descriptive of anything. (Brief,
p. 13.) (Emphasis in original.)
Applicant submitted copies of six third-party registrations
wherein “the term EXCHANGE was determined to be part of an
inherently distinctive unitary composite” (brief, p. 3).
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978); In re Eden Foods Inc. 24 USPQ2d 1757
(TTAB 1992); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). Further, 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 term or phrase is being used on or
Ser. No. 75/831673
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in connection with those goods or services, and the impact
that it is likely to make on the average purchaser of such
goods or services. See In re Consolidated Cigar Co., 35
USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products Co.,
20 USPQ2d 1753 (TTAB 1991). Consequently, “[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test.” In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Rather, the question is whether someone who knows what the
goods or services are will understand the term or phrase to
convey information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990).
We look first to the pages from applicant’s website
and made part of the record herein. This information
includes the following statements:
IBX services are designed not to
compete with the service offerings of
its customers. In fact, the IBX
service portfolio enables and fosters
interconnection service and traffic
exchange in the most expedient and
cost-effective way so that customers
can maximize their own business
potential and generate revenue.
The level of excellence and consistency
achieved in the architecture and design
ensure that Equinix IBX centers are
the most secure and high quality
exchanges available. (Emphasis added.)
Ser. No. 75/831673
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The dictionary listing for “Internet” as well as
applicant’s disclaimer thereof establish that the word is
at least merely descriptive of applicant’s service of
providing access to a global communication network with
unlimited interconnections among various carriers and
providers. See Quaker State Oil Refining Corporation v.
Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972); and In re Ampco Foods, Inc., 227 USPQ 331, 333
(TTAB 1985).
Further, the Nexis evidence, examples of which are
reproduced below, demonstrates that the term “Internet
business exchange” immediately conveys information about
the purpose and function of applicant’s services (emphasis
added):
Headline: Marriott, Hyatt Joining Forces
on Internet for Hotel Supplies...
...Indeed, the hotel business is part of
a growing number of industries in which
rivals are banding together to cut costs
while competing for the same customers.
Elk Grove Township-based UAL Corp.’s
United Airlines said last week it is part
of a consortium of competing airlines
investing $50 million to create an
Internet business exchange for aircraft
supplies. Both Hoffman Estates-based
Sears, Roebuck and Co. and Deerfield-
based Walgreen Co. are involved in
similar Web sites for retail suppliers.
“Chicago Daily Herald,” May 3, 2000;
...Six of the world’s biggest airlines,
including Atlanta-based Delta, are
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joining to form an Internet business
exchange to handle their $32 billion in
annual spending on goods and services, a
move they say will drive down supply
costs at least 5 percent...
The group will use the exchange to buy
and sell items such as fuel, aircraft
components, avionics equipment and engine
parts. “The Atlanta Journal and
Constitution,” April 28, 2000;
Headline: Energy B-to-B Starts Off With
15 Utilities...
Fifteen of the nation’s largest electric
and gas companies have formed a
consortium to build an Internet business
exchange with suppliers. The consortium
expects to announce the formation of an
independent company in June, which will
be followed by the creation of the
business-to-business online marketplace
by year’s end... The yet-unnamed, for-
profit exchange will be open for use by
any firm in the energy and utilities
industry... “Computerworld,” April 3,
2000;
Headline: Start-up Targets Electronic
Payments Process
...Clareon will offer its payment service
in two ways: The service will be
available to a slew of new Internet
business exchanges because they typically
lack this fundamental capability...,
“Network World,” June 26, 2000;
...The two companies [Commerce One and
Oracle] announced they were combining
their Internet business exchanges for the
automakers General Motors, Ford and
DaimlerChrysler..., “Chattanooga Times,”
February 26, 2000; and
Headline: B2B Web Sites: Works in
Progress
...Almost every major industry has
ventured into creating some type of B2B
Ser. No. 75/831673
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Internet marketplace, including the
aeronautic, automobile and metal
industries. The structures of these
Internet business exchanges do not follow
the exact same model, but many do follow
the auction format where buyers and
sellers are together competing against
one another..., “New York Law Journal,”
August 15, 2000.
In addition to uses of the phrase “Internet business
exchange” such as those listed above, there are also
numerous stories of record referring to the same service
and various consortiums as engaged in “online business
exchange(s).”
When we consider the phrase INTERNET BUSINESS EXCHANGE
as a whole, and in the context of applicant’s services
[“providing multiple user access to a global communication
network featuring the provision of unlimited and
unrestricted interconnection among the Internet Service
Providers (ISPs), content providers, carriers and Component
Service Providers (CSPs)”], the phrase immediately informs
consumers that applicant’s services are intended to provide
and facilitate interconnections on the Internet between
ISPs, content providers, carriers, and CSPs allowing them
to exchange information and business over the Internet.
That is, the purchasing public would immediately understand
the nature and purpose of the services, knowing that
applicant’s services involve the provision of multiple user
Ser. No. 75/831673
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access to an unrestricted interconnection among these users
for the conduct of business-to-business commerce on the
Internet in an exchange environment.
The combination of these words does not create an
incongruous or creative or unique mark. Rather,
applicant’s mark, INTERNET BUSINESS EXCHANGE, when used in
connection with applicant’s identified services,
immediately describes, without need of conjecture or
speculation, the purpose or function of applicant’s
services, as discussed above. Nothing requires the
exercise of imagination or mental processing or gathering
of further information in order for purchasers of and
prospective customers for applicant’s services to readily
perceive the merely descriptive significance of the phrase
INTERNET BUSINESS EXCHANGE as it pertains to applicant’s
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Intelligent Instrumentation Inc., 40 USPQ2d 1792 (TTAB
1996); and In re Time Solutions, Inc., 33 USPQ2d 1156 (TTAB
1994).
Applicant’s argument that competitors in the industry
would not be deprived of the use of the words “Internet,”
“business” and/or “exchange” to describe similar services
Ser. No. 75/831673
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is not persuasive. To the contrary, here, the phrase
unquestionably projects a merely descriptive connotation.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. We believe that competitors have
a competitive need to use this phrase. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
The case of Concurrent Technologies Inc. v. Concurrent
Technologies Corp., 12 USPQ2d 1054 (TTAB 1989), cited by
applicant, does not require a different result herein. In
the Concurrent case, the Board found the mark CONCURRENT
TECHNOLOGIES CORPORATION was not merely descriptive for
printed electronic circuit boards based on the absence of
evidence of any descriptive uses of the terms “concurrent”
or “concurrent technologies.” The involvement of goods,
not services, and the lack of evidence of any descriptive
use in that case, are to be distinguished from the case now
before the Board. In the instant case, there is
significant evidence of descriptive uses of the phrase
“Internet business exchange” as a whole for services such
as those involved herein; descriptive uses of “exchange” by
applicant in its website specifically referring to
interconnection services and exchanges; and dictionary
Ser. No. 75/831673
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evidence of the meaning of the terms “Internet” and
“exchange.”
The third-party registrations submitted by applicant
to show examples where the term “exchange” was not
disclaimed or was not registered on the Supplemental
Register, and the third-party registrations submitted by
the Examining Attorney to show examples where the term
“exchange” or “business exchange” was disclaimed or was on
the Supplemental Register, are not persuasive. While
uniform treatment under the Trademark Act is an
administrative goal, the Board’s task in an ex parte appeal
is to determine, based on the record before us, whether
applicant’s mark is merely descriptive. As often noted by
the Board, each case must decided on its own merits. We
are not privy to the records of the third-party
registration files, and moreover, the determination of
registrability of those particular marks by the Trademark
Examining Attorneys cannot control the merits in the case
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”)
Ser. No. 75/831673
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Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.