Gigit, Inc.

Trademark Trial and Appeal BoardFeb 14, 2020

87069673 (T.T.A.B. Feb. 14, 2020)

This Opinion is Not a Precedent of the TTAB Hearing: November 7, 2019 Mailed: February 14, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Gigit, Inc. _____ Serial No. 87069673 _____ Morris E. Turek of YourTrademarkAttorney.com, for Gigit, Inc. Jeri Fickes, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Taylor, Goodman, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background and Applicant’s Request, in the Alternative, to Amend to the Supplemental Register Gigit, Inc. (“Applicant”) seeks registration on the Principal Register of the mark GIGIT, in standard characters, for: Serial No. 87069673 - 2 - Staff augmentation services, namely, providing information technology (IT) support staff; Updating and maintenance of data in computer databases in International Class 35; and Computer and information technology security services, namely, providing social engineering assessments and assessing and testing the security posture and vulnerability of computer networks and the software applications that run on the networks; Computer and information technology security consultation services; Information technology consultation services; Information technology and computer network engineering services, namely, designing, configuring, optimizing, and implementing computer networks; Computer and information technology support services, namely, help desk services and monitoring the technological functions of computer network systems; Data warehousing; Installation, repair, updating, and maintenance of computer software; Software design and development; Information technology project management services; Consulting in the field of information technology project management; IT integration services; Computer systems integration services in International Class 42.1 The Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the identified services. After the Examining Attorney made the refusal final, Applicant requested reconsideration and appealed. On reconsideration, the Examining Attorney maintained the descriptiveness refusal, and added an additional ground for refusal under Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b), that the mark in the 1 Application Serial No. 87069673 has a filing date of June 13, 2016, and originally was based on Applicant’s assertion of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). Applicant filed a statement of use on April 9, 2018, asserting April 8, 2018 as the date of first use of the mark anywhere and in commerce. Serial No. 87069673 - 3 - drawing is not a substantially exact representation of the mark as used on the specimen. In its March 26, 2019 Response to Office Action, Applicant stated that “[i]n the event, the Board affirms Trademark Examining Attorney’s Section 2(e)(1) refusal, Applicant hereby amends its application to seek registration of its mark on the Supplemental Register.” In an email to Applicant’s counsel that appears in an April 17, 2019 Note to File, and in her April 17, 2019 Office Action, the Examining Attorney advised Applicant that following the Board’s decision on appeal, prosecution cannot be reopened to give Applicant the opportunity to amend to the Supplemental Register. Applicant did not pursue the matter further. We do not construe Applicant’s quoted statement as an improper request to reopen prosecution in the event of a loss on appeal. Rather, we interpret the statement as a permissible request, in the alternative, to amend to the Supplemental Register in the event it cannot traverse the descriptiveness refusal on the merits. Applicant perhaps unadvisedly placed its statement under the heading “Reservation of Rights.” The Examining Attorney is correct that an applicant may not “reserve the right” in the future to amend to the Supplemental Register if the refusal is affirmed on appeal. In re Integrated Embedded, 120 USPQ2d 1504, 1511 (TTAB 2016) (Board stating the “[a]pplicant cannot ‘reserve a right’ that does not exist”); see also TMEP § 816.04 (Oct. 2018). However, an “applicant may respond by arguing the merits of the examining attorney’s refusal of registration on the Principal Register and, in the alternative, request registration on the Supplemental Serial No. 87069673 - 4 - Register.” TMEP § 816.04. We view Applicant’s statement as this type of alternative request because rather than characterizing the request as the potential to amend in the future, Applicant stated that it “hereby amends” in the event its merits arguments at the Board did not succeed. Typically with such an amendment in the alternative, an examining attorney would afford an applicant the option of approval for “registration on the Supplemental Register or going forward with the appeal on the underlying refusal,” and place a note to the file indicating which option the applicant selected. TMEP § 816.04. Although that did not occur here, no harm results because Applicant clearly conveyed in the Response to Office Action its intention to “resum[e] its appeal with the Trademark Trial and Appeal Board” if the Examining Attorney made the Section 2(e)(1) refusal final. The Examining Attorney gave no indication that she considered the mark ineligible for registration on the Supplemental Register. Thus, we treat Applicant’s request as a viable request, in the alternative, for registration on the Supplemental Register. The Examining Attorney then made both the Section 2(e)(1) and drawing-based refusals final, and the appeal resumed. Applicant and the Examining Attorney filed briefs, and an oral hearing took place. As explained below, we affirm the descriptiveness refusal but reverse the drawing-based refusal. II. Descriptiveness Section 2(e)(1) of the Trademark Act precludes registration of “a mark which, (1) when used on or in connection with the goods of the applicant is merely Serial No. 87069673 - 5 - descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito- Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). “The major reasons for not protecting such [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products [or services].” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)). Descriptiveness must be assessed “in relation to the [services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the [services] because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing Abcor Dev., 200 USPQ at 218). The descriptiveness analysis concentrates on the recitation of services set forth in the application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comp. Servs., Inc., 918 F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). Evidence that a term is merely Serial No. 87069673 - 6 - descriptive to the relevant purchasing public “may be obtained from any competent source, such as dictionaries, newspapers, or surveys.” Bayer AG, 82 USPQ2d at 1831. A. Arguments and Evidence The Examining Attorney contends that the proposed mark merely describes “that the services pertain to the information technology (IT) sector, and that applicant is offering services on a gig, or temporary, basis.”2 The Examining Attorney introduced online dictionary entries for “gig” and “IT” including the following relevant definitions:3 gig: … a job usually for a specified time; especially : an entertainer’s engagement IT: Stands for “information technology,” and is pronounced “I.T.”… Many companies now have IT departments for managing the computers, networks, and other technical areas of their businesses. IT jobs include computer programming, network administration, computer engineering, Web development, technical support, and many other related occupations. Applicant’s identification corroborates this definition of “IT,” by defining it the first time it appears as “providing information technology (IT) support staff,” and then later using “IT” in the identification with integration services. The Examining Attorney also introduced screenshots of Applicant’s website, which shows the 2 8 TTABVUE 5. 3 TSDR May 16, 2018 Office Action at 2-14. Serial No. 87069673 - 7 - logo and states, “Our Staff Augmentation Service is a uniquely positioned service that allows GigIT to be fully engaged in our customers [sic] projects. Our goal is to provide the appropriate engineers and IT solutions to fit each customer’s needs.”4 In addition, the record includes the specimen described as “screenshots of Applicant’s website,” which displays the same logo and refers to “GigIT consultants” and “GigIT’s vendor neutral approach.” The website promotes the availability of “300+ Engineers, Consultants, Project Managers, and IT Professionals” for “Long and Short-Term assignments,”5 which the Examining Attorney relies on as evidence that Applicant offers IT-related services on a temporary basis. Applicant concurs that GIGIT describes a feature of its services, but argues that “the issue in this case is whether Applicant’s mark is a double entendre with a second suggestive meaning,”6 so as to avoid mere descriptiveness. Applicant introduced another definition of “gig” from the online Oxford Dictionary7 that includes the following entry: VERB [NO OBJECT] informal 1 Perform a gig or gigs. ‘two or three nights a week we were gigging’ 4 TSDR May 16, 2018 Office Action at 15. 5 TSDR April 9, 2018 Statement of Use at 7. 6 6 TTABVUE 5 (Applicant’s Brief). 7 TSDR July 22, 2018 Response to Office Action at 6. Serial No. 87069673 - 8 - Applicant also submitted numerous third-party registrations of marks that include “IT.”8 According to Applicant, “[t]he second suggestive meaning of Applicant’s mark combines the verb form of ‘gig’ with the pronoun ‘it.’ Customers needing assistance … can just ‘gig it’ and find temporary staffing solutions….”9 B. Analysis A “double entendre” is defined as “ambiguity of meaning arising from language that lends itself to more than one interpretation.” In re The Place Inc., 76 USPQ2d 1467, 1470 (TTAB 2005) (quoting WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993)). “For trademark purposes, a ‘double entendre’ is an expression that has a double connotation or significance as applied to the goods or services.” TMEP § 1213.05(c) cited in In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017). The multiple interpretations that make an expression a ‘double entendre’ must be associations that the public would make fairly readily, and must be readily apparent from the mark itself. In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1105 (TTAB 2018); Calphalon, 122 USPQ2d at 1163-64; TMEP § 1213.05(c). We do not find a readily apparent double entendre in GIGIT. Neither Applicant’s website evidence nor any other evidence of record shows use of the expression “gig it,” as a verb command or otherwise. See In re Virtual Indep. Paralegals, 2019 USPQ2d 111512, *2 (TTAB 2019) (“Evidence of the public’s understanding of a term may be obtained from ‘any competent source, such as … dictionaries, newspapers 8 TSDR July 22, 2018 Response to Office Action at 10-50; 4 TTABVUE 9-52. 9 6 TTABVUE 6 (Applicant’s Brief). Serial No. 87069673 - 9 - and other publications.’”) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)). More importantly, the only evidence Applicant introduced in support of this verb use of “gig” explicitly states that the verb has “NO OBJECT,”10 meaning that it is intransitive.11 Thus, the second meaning advocated by Applicant consists of a grammatically illogical expression in which the intransitive verb “gig” would improperly be followed by an object, the pronoun “it.” Absent any evidence of use of this expression, even as slang, we find that consumers of information technology services would not view GIGIT as “gig it,” but instead only would understand the mark as “gig I.T.” DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (“must consider the mark as a whole and do so in the context of the goods or services at issue.”). 10 TSDR July 22, 2018 Response to Office Action at 6. 11 We take judicial notice of the merriam-webster.com entry for “intransitive,” accessed February 11, 2020, which defines it as “not transitive – especially: characterized by not having or containing a direct object// an intransitive verb,” and in the additional explanation states: A transitive verb is a verb that requires a direct object, which is a noun, pronoun, or noun phrase that follows the verb and completes the sentence's meaning by indicating the person or thing that receives the action of the verb. The direct object typically answers the question what? or whom?: The kids like pickles. That really annoys me. Have they sold their house yet? An intransitive verb is not used with a direct object. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of online dictionaries that exist in printed format or have regular fixed editions). Serial No. 87069673 - 10 - We have considered, but do not find persuasive, Applicant’s third-party registration evidence. Applicant maintains that the third-party marks show “that the it/I.T. double meaning is so commonly used that most people (and Applicant’s customers in particular) are already familiar with and appreciate the wordplay.”12 First, registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1412 (TTAB 2015) (quoting In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Thus, the registrations cannot establish direct consumer exposure to the marks. However, Applicant properly may rely on them to “show[] how language is generally used,” in the manner of a dictionary. Cf. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (registrations may be used in the manner of a dictionary to show that a mark or a portion thereof is suggestive or descriptive). Second, considering the registrations in this manner, we disagree with Applicant’s assertion that the third-party marks for information technology-related goods or services “clearly employ the same wordplay as Applicant’s GIGIT mark”.13 In fact, a perusal of the third-party marks Applicant emphasizes in its Brief14 reveals that none of them are for grammatically incorrect, unused expressions such as Applicant’s “gig it” suggestion. Rather, contrary to Applicant’s contention that 12 6 TTABVUE 8. 13 6 TTABVUE 6. 14 6 TTABVUE 6-7. Serial No. 87069673 - 11 - these marks “do not include phrases that are commonly used,”15 we find that the third-party marks generally consist of or draw on recognizable expressions using the pronoun “it,” such as “MAKING IT POSSIBLE,” “HIRE A KNOW IT ALL,” “GET IT RIGHT,” “THE HEART OF IT,” and “BECAUSE IT MEANS BUSINESS.” Thus, the registrations do not support construing GIGIT as a double entendre, and instead, most serve as contrasting examples of true double entendre expressions using the pronoun “it” that are readily apparent from the marks and that the public would understand fairly readily. Applying the appropriate standard whether someone familiar with the identified services will understand the mark to describe features of them, Applicant’s mark is merely descriptive. See DuoProSS Meditech 103 USPQ2d at 1757; Abcor Dev., 200 USPQ at 218. The above definitions of each word show that consumers would understand GIGIT to describe information technology-related services (IT) offered on a temporary basis (gig). Applicant has not submitted any evidence to suggest that the combination of these individually descriptive terms GIG and IT takes on any different meaning, or a new and unique commercial impression. “In considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If the combination retains the descriptive significance of the individual parts, as we 15 6 TTABVUE 7. Serial No. 87069673 - 12 - find here, the mark as a whole must be considered merely descriptive. In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); see also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light- emitting diodes for industrial and commercial applications). We also note that the omission of a space between the two components would not diminish the descriptiveness of the mark. “It is almost too well established to cite cases for the proposition that an otherwise merely descriptive term is not made any less so by merely omitting spaces between the words....” Minn. Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967). See also In re Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, consultation and listing services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897n. 2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art”’). Accordingly, we find the mark as a whole merely descriptive. III. Drawing/Specimen Agreement The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. As such, [i]n an application under section 1(b) of the Act, the drawing of the mark must be a substantially exact representation of the mark as intended to be used on or in connection with the goods and/or services specified in the Serial No. 87069673 - 13 - application, and once an amendment to allege use under § 2.76 or a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services. Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b). As discussed above, the drawing of the standard-character mark is GIGIT, which covers any “font style, size, or color.” See 37 C.F.R. § 2.52(a). The proposed mark appears on Applicant’s specimen both as GigIT and as . In explaining why the drawing is not a substantially exact representation of the mark on the specimen, the Examining Attorney alleges that the drawing displays the mark as one word, while the specimen presents it as two words. Even in the specimen’s non- stylized presentation of GigIT with no space, the Examining Attorney asserts that “the capitalization used within the applied-for mark creates the impression of two separate words … presented in compound form.”16 The Trademark Manual of Examining Procedure (TMEP) Section 807.12(e) addresses compound word marks as follows: A compound word mark is comprised of two or more distinct words, or words and syllables, that are represented as one word (e.g., BOOKCHOICE, PROSHOT, MAXIMACHINE, PULSAIR). Often, each word or syllable in a compound word mark is displayed or highlighted by: (1) capitalizing the first letter of each word or syllable (e.g., TimeMaster); or (2) presenting the words or syllables in a different color, script, or size (e.g., RIBtype). 16 8 TTABVUE 10 (Examining Attorney’s Brief). Serial No. 87069673 - 14 - This examination guidance discusses the presentation of compound word marks in drawings and specimens, and how the presentation of the mark as one or two words may raise an issue as to whether the mark on the drawing is a substantially exact representation of the mark on the specimen. Relevant to this case, the TMEP provides an example in which the drawing depicts the mark as BOOKCHOICE, and specifically provides that “a specimen showing the mark as BookChoice would be a substantially exact representation.” TMEP § 807.12(e). We agree. In this case, one presentation of Applicant’s standard-character GIGIT mark on the specimen is GigIT,17 which we find analogous to the BookChoice example from the TMEP. The USPTO typically displays standard-character marks in all capital letters, but the standard-character claim encompasses a presentation in “both uppercase and lowercase letters.” Calphalon, 122 USPQ2d at 1154 n.1 & 1158; see also In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, n.1 (TTAB 2013) (applied-for mark displayed with uppercase and lowercase letters treated as standard form mark in all uppercase letters). Thus, Applicant’s drawing, GIGIT, is a substantially exact representation of the GigIT mark that appears on the specimen, regardless of the use of both uppercase and lowercase letters in the mark on the specimen. Applicant’s drawing therefore complies with the rules and with relevant examination guidance. 17 As an example of this presentation of the mark, the following is an excerpt from the specimen at p.5: . Serial No. 87069673 - 15 - Decision: We reverse the refusal to register on the ground that the drawing is not a substantially exact representation of the mark as used on the specimen. We affirm the refusal to register the mark on the ground that it is merely descriptive of Applicant’s goods under Trademark Act Section 2(e)(1). In view of Applicant’s alternative request for registration on the Supplemental Register, the amendment will be entered and the mark will be approved for registration on the Supplemental Register in due course.