Global Mentoring Solutions, Inc.

Trademark Trial and Appeal Board

Jun 21, 2005

No. 76487218 (T.T.A.B. Jun. 21, 2005)

Mailed:
June 21, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Global Mentoring Solutions, Inc.
________

Serial No. 76487218
_______

Sherry H. Flax of Saul Ewing LLP for Global Mentoring
Solutions, Inc.

Brendan D. McCauley, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Hairston, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On February 4, 2003, Global Mentoring Solutions, Inc.
(applicant) filed an intent-to-use application to register
REAL TIME LEARNING in standard characters on the Principal
Register for “training services in the field of computer
applications and technical training for businesses via the
Internet” in International Class 41. 1

1 Serial No. 76487218
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76487218
2
The examining attorney refused registration on the
ground that the mark merely described the services under
Section 2(e)(1) of the Trademark Act. 15 U.S.C.
§ 1051(e)(1). Applicant responded; the examining attorney
made the refusal final and applicant appealed.
For the reasons set forth more fully below, we affirm.
Briefly, the examining attorney has presented substantial
evidence of the use and understanding of the term REAL TIME
LEARNING in relation to training services rendered over the
Internet to describe a significant characteristic or
feature of those services, that is, the ability of
participants to interact during the training.
Section 2(e)(1) of the Trademark Act prohibits
registration of a mark that is “merely descriptive” of the
goods or services identified in the application. To
determine whether a mark is merely descriptive, we must
consider the significance of the mark in connection with
the goods or services identified in the application, not in
the abstract. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); TMEP § 1209.01(b). A
term is merely descriptive if it immediately describes a
characteristic or feature of the goods or services. In re
Guylay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-1010 (Fed. Cir.
1987); TMEP § 1209.01(b). Words may be combined to form
Ser No. 76487218
3
phrases or terms which take on a well understood
descriptive meaning to the relevant public for specific
products or services. In re Copytele Inc., 31 USPQ2d 1540,
1542 (TTAB 1994); In re Digital Research Inc., 4 USPQ2d
1242, 1244 (TTAB 1987); TMEP § 1209.03(d).
In this application, the examining attorney has
presented substantial evidence that REAL TIME LEARNING is
used and readily understood by the relevant public, those
who use Internet-based training services, to identify a
training or educational service rendered via the Internet
which permits participants to interact with one another
during the training. The evidence shows that Internet-
based training services which incorporate this capability
are also described as “synchronous” and distinguished from
services which do not possess such a feature, that is,
“asynchronous” or self-paced training services.
The examining attorney’s evidence, derived from
electronic searches, consists of several articles in full
text, short excerpts from a U.S. newspaper data base
search, listings of results from Google searches, a
definition from an online “Glossary of e-Learning Terms,”
and definitions of “real time” and “learning” from general
dictionaries.
Ser No. 76487218
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The full-text articles clearly demonstrate the
significance of REAL TIME LEARNING in relation to on-line
training services. For example, an article entitled “Have
e-Learning Will Travel” from www.purpletrain.com attached
to the examining attorney’s response to applicant’s request
for reconsideration states, “For those learners who enjoy
interacting, synchronous or real time learning allows for
simultaneous learner access to content, instructors and
other learners LIVE. Learners meet ‘virtually’ at a
specific time without leaving their home or workplace and
often communicate across Different Time Zones.” Another
article entitled “What is Virtual Training?” attached to
that action from www.pcfocus.com states, “Self-paced
training on the Internet has been available for a few years
but only in recent months LIVE learning over the Internet
has become not only available but affordable. PC Focus
wants to introduce the virtual classroom to you and your
organization. It’s live, hands-on, ‘real time’ learning.”
Another article attached to that action entitled “e-lessons
learned” from www.camagazine.com states, “Today these firms
are using satellite broadcasts and webcast for synchronous
(real-time) learning, and computer-based training as well
as training–based CDROMS for asynchronous learning.” Yet
another article entitled “Real-Time Learning Labs” attached
Ser No. 76487218
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to the action from www.ecollege.com states, “eCollege is
pleased to offer quick and easy training opportunities for
faculty and administrators – Real-Time Learning Labs.
Real-Time Learning Labs are 90 minute synchronous workshops
on specific areas of the eCollege AU+ system. . . . Each
session is live and led by a member of the eCollege
Instructional Design team.” Another article entitled
“Business-Based Learning: Strategies for Real-Time
Learning” attached to that action from www.clomedia.com
states, “Part Three developed solutions for virtual
collaborative communities to leverage those “a-ha” real-
time learning moments . . .” Finally, another article
entitled “Classroom Training in Real Time” attached to that
action from www.informationweek.com states: “The company
hopes LearnLinc will strike the right balance of individual
study and live-if remote-tutoring. Demand for real-time
learning software is likely to pick up as more innovative
products come to market . . .”
The U.S. Newspaper data-base evidence attached to his
response to the request for reconsideration consists of
numerous short excerpts. These excerpts confirm the
significance of REAL TIME LEARNING demonstrated in the
full-text articles. For example, Result 19 from the New
York Beacon states, “Disadvantaged Students Find Success on
Ser No. 76487218
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the Net . . . over the Internet offer real time learning
and interaction with professors and other . . . “ Result
28 from the Fresno Bee states, “Distance barrier to
learning falls; Technology links distant students to course
offerings at Fresno State . . . All of this means real time
learning for Blades and others. . .”
The examining attorney attaches to his final refusal
entries from an online “Glossary of e-Learning Terms” from
www.learnframe.com, including the following:
asynchronous learning - A self-paced learning event.
Learners are online at different times and cannot
communicate without time delay. Examples: courses
taken via Internet, CD-ROM, Web presentation, or
videotaped classes.

synchronous learning – Real time learning situation
that can include immediate, two-way communication
between participants.

These entries provide further confirmation of the
descriptive significance of REAL TIME LEARNING in the field
of Internet-based training and demonstrate that
“synchronous learning” and “real time learning” can be used
interchangeably.
The examining attorney also attaches listings of
results from a Google® search to his response to the
request for reconsideration. This evidence also confirms
the descriptive significance of REAL TIME LEARNING
established through the other evidence.
Ser No. 76487218
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In addition, the examining attorney, with his first
action refusal and in later actions, includes definitions
of the individual terms “real time” and “learn” or
“learning.” These definitions are, of course, more
general, but they too support the examining attorney’s
position. The evidence discussed above demonstrating that
the full phrase “real time learning” has become a term of
art in the field of Internet-based training supercedes
these definitions in importance for purposes of determining
whether REAL TIME LEARNING is merely descriptive under
§ 2(e)(1) for Internet-based training services. In re
Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998).
The only evidence applicant submitted in support of
its position are records of third-party registrations
discussed below. Applicant has not provided any evidence
which in any way contradicts or counters the evidence
presented by the examining attorney. In its appeal brief
applicant simply states, “The Examining Attorney has
provided no evidence that a consumer who encounters the
mark REAL TIME LEARNING will immediately understand that
Applicant’s services are ‘training services in the field of
computer applications and technical training services for
businesses via the Internet.’” Applicant does not
Ser No. 76487218
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otherwise address the evidence presented by the Examining
Attorney in its responses or its brief.
In an apparent attempt to overcome the refusal the
only evidence applicant has offered is a group of third-
party registrations which include either “real time” or
“learning” in the marks, noting that the terms are not
disclaimed in the records. Relying on these records,
applicant argues that the PTO does not consider “learning”
to be merely descriptive of educational or training
services. Id. at 3. Applicant argues further on the basis
of these records that, “the PTO does not consider use of
the terms REAL TIME in combination with another descriptive
term as merely descriptive of a function or feature of the
relevant goods or services.” Id. at 4.
With regard to the third-party registrations in
general, the absence of disclaimers of specific terms in
the marks in those records is of little or no relevance for
the purpose of determining the significance of REAL TIME
LEARNING in relation to the services applicant identifies
here. The marks and the goods and services in each of the
registrations differ from the mark and the services at
issue here. Prior registrations cannot control our
determination in this application. In re Nett Designs,
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Ser No. 76487218
9
We must consider each application on its own merits based
on the record in that application and current
circumstances. In re Sun Microsystems Inc., 59 USPQ2d
1084, 1088 (TTAB 2001).
Furthermore, examining attorneys have wide discretion
in requiring disclaimers. TMEP § 1213.01(a). In many
instances PTO policy directs examining attorneys not to
require a disclaimer of a particular descriptive term, such
as, when the descriptive term is part of a unitary mark.
See, e.g., TMEP § 1213.05. Therefore, the presence or
absence of a disclaimer in a particular registration does
not necessarily indicate whether or not the PTO considered
a term merely descriptive, even at the time the application
was examined.
Furthermore, many of the registrations submitted by
applicant, in fact, include disclaimers of “real time.”
See, e.g., Reg. Nos. 2,062,112 for REALTIME NOTES
(“REALTIME” disclaimed); 2,258,519 for REAL-TIME
INNOVATIONS (“REAL-TIME” disclaimed); 2,187,475 for REAL
TIME REMOTE (“REAL TIME” disclaimed); and 2,507,504 for
REAL-TIME STUDIO (“REAL-TIME” disclaimed).2 Most
importantly, applicant’s arguments based on third-party
Ser No. 76487218
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registrations are unpersuasive in view of the substantial
evidence provided by the examining attorney that the entire
phrase REAL TIME LEARNING now has taken on a specific
descriptive meaning in relation to the services Applicant
identified in the application – evidence applicant has not
addressed. In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB
1998).
Lastly, we must reject the applicant’s general
argument that consumers will not understand what
applicant’s services are based on the mark. This argument
disregards the fundamental requirement that we must
consider the significance of the mark in relation to the
goods or services identified in the application, not in the
abstract. As the Board has observed previously, “Whether
consumers could guess what the product is from
consideration of the mark alone is not the test.” In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
TMEP § 1209.01(b).
Although the applicant had ample opportunity to do so
in its two responses to office actions and two briefs, the
applicant has not offered any explanation or argument as to
the characteristics of the services it intends to offer

2 Furthermore, applicant has not indicated whether there may be
other registrations, which include disclaimers of either term,
Ser No. 76487218
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under the REAL TIME LEARNING mark, most importantly whether
or not the services will permit participants to communicate
during the training. Furthermore, applicant has not
represented that the services would not include a feature
whereby participants could communicate with one another
during the training.
The examining attorney has argued that applicant has
“conceded” that “real time” is merely descriptive because
applicant proffered a disclaimer of “real time” in its
response to the examining attorney’s first action.
Examining Attorney’s Appeal Brief at 4. In its request for
reconsideration applicant withdrew the disclaimer
indicating it mistakenly believed that the disclaimer had
been required. Applicant’s Request for Reconsideration at
4. In view of the evidence of record, we need not consider
whether applicant conceded that “real time” is merely
descriptive and have not relied on such an admission in
reaching our decision.
Accordingly, we conclude that REAL TIME LEARNING is
merely descriptive of “training services in the field of
computer applications and technical training for businesses
via the Internet” in view of the substantial evidence that
the relevant public uses and readily understands REAL TIME

which it did not provide for the record.
Ser No. 76487218
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LEARNING to describe a significant characteristic or
feature of those services, that is, the ability of
participants to communicate during the training.
Decision: The refusal to register applicant’s mark on
the ground that it is merely descriptive of the services is
affirmed.