Global Mentoring Solutions, Inc.

Trademark Trial and Appeal Board

Jun 7, 2005

No. 76487220 (T.T.A.B. Jun. 7, 2005)

Mailed: June 7, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Global Mentoring Solutions, Inc.
________

Serial No. 76487220
_______

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 Hohein, Walters and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Global Mentoring Solutions, Inc. has filed an
application to register the term "REAL TIME MENTORING" for
"training services in the field of computer applications and
technical training for businesses via the Internet."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's services,
the term "REAL TIME MENTORING" is merely descriptive thereof.

1 Ser. No. 76487220, filed on February 4, 2003, which is based on an
allegation of a date of first use anywhere and in commerce of November
1, 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76487220
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used or is intended to be used on or in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[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).

Ser. No. 76487220
3
Applicant contends in its brief that the term "REAL
TIME MENTORING" has not been shown to be merely descriptive
because, among other things, the Examining Attorney "has provided
no evidence that a consumer who encounters the mark ... will
immediately understand that Applicant's services are 'training
services in the field of computer applications and technical
training for businesses via the Internet.'" Applicant urges,
instead, that "REAL TIME MENTORING is an inventive mark that
creates a unique commercial impression that indicates the source
of the services, not their nature" and that "consumers seeing or
hearing the mark ... could not determine that Applicant provides
services in the field of computer and technical applications for
businesses." Noting, in particular, that the "attached
www.dictionary.com and thesaurus.com entries" show that "[t]he
term MENTORING means to 'serve as a trusted advisor or
counselor,'" applicant argues that inasmuch as such term "is a
specialized term that is not in widespread or common use in
connection with computer applications and technical training, it
is not merely descriptive of these services."
Applicant additionally contends that "MENTOR and
MENTORING are used without disclaimer in dozens of marks on the
Principal Register in connection with educational software and
services." In particular, applicant points to copies it has
furnished of various third-party registrations for such marks as
constituting evidence that the Patent & Trademark Office ("PTO")
"does not consider the term MENTORING to be merely descriptive in
connection with educational or training services." As set forth
Ser. No. 76487220
4
in its brief, such registrations include marks for the following
services:
MENTOR ONLINE ... ([for] educational
services, namely, providing on-line training
and skill enhancement courses for persons in
the field of credit and risk management);
MENTOR TECHNOLOGIES ... ([for] training
services, namely, training in the use of
computers, computer networks, computer
sales); MENTOR-AT-WORK ... ([for] educational
and training services offered to employed
personnel for relieving physical and/or
emotional stress in the workplace); EXPANDING
THE WORLD OF MENTORING ... ([for] educational
services, namely, providing mentoring
programs in the fields of career and personal
development which are provided on-line);
[and] PROFESSIONAL MENTORING ... ([for]
providing on-line seminars and workshops in
the fields of leadership, management, etc.)
....

Similarly, applicant asserts that, as shown by the
copies of other third-party registrations which it has submitted,
"the terms 'REAL TIME' are used in dozens of registered marks in
connection with providing business enhancing services to a
defined group of consumers." Such registrations, applicant
insists, "are evidence 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." As listed in its brief, the following are examples
of "word marks on the Principal Register that include the terms
REAL TIME with another term":
REAL WORLD, REAL TIME, REAL I.T. ... ([for]
providing an Internet website with
information, news and advice about and for
the information technology community);
REALTIME COACHING ... ([for] seminars and
workshops in the field of leadership
training); REAL TIME INNOVATIONS ... ([for]
Ser. No. 76487220
5
computer software for use in real-time system
development); REALTIMEPUBLISHERS.COM ...
([for] electronic publishing, namely,
publication of computer-related reference
books on websites of others); REALTIMESITES
... ([for] information network services,
namely, designing and implementing web sites
for others, graphic design, ... database
consulting, computer security consulting and
hosting web sites of others on a computer
server for a global computer network); REAL
TIME KNOWLEDGE ... ([for] providing
information and interpretation and analysis
of information in the healthcare field);
REALTIME EVENTS ... ([for, inter alia,]
educational services, namely, providing
educators and school-aged children
interactive activities in the field of world
wide web navigation and exploration
pertaining to current events via
subscriptions to websites that stimulate
interaction between student, teacher and a
global computer network); REAL-TIME WORKSHOP
... ([for] computer software for real-time
control and simulation); REAL TIME BANKING
ONLINE ... ([for] banking services); REAL
DATA. REAL TIME. ... ([for] medical and
dental insurance administration services,
namely on-line verification of benefits,
patient eligibility and tracking of benefits
utilization by the insured, submissions of
claims by the provider and adjudications);
REAL TIME REMOTE ... ([for] teleconferencing
services, namely, a marketing process that
enables people and groups in remote locations
to meet via on-line computer networks and
telephone technology supported by
professional facilitators); [and] REAL-TIME
STUDIO ... ([for] use by developers in
designing and documenting hardware/software
applications in the field of real-time
systems).

The Examining Attorney, on the other hand, asserts in
his brief that, "when viewed in relation to the applicant's
services, the applicant's mark [merely] describes a
characteristic or feature of the applicant's services." In this
regard, the Examining Attorney notes with respect to the term
Ser. No. 76487220
6
"real time" that he has made of record a definition of such term
from The American Heritage Dictionary of the English Language
(3rd ed. 1992) as meaning "the actual time in which a physical
process under computer study or control occurs." In view
thereof, the Examining Attorney maintains that, "[i]n relation to
the applicant's training services provided via the Internet, the
wording indicates that the applicant's training services take
place in actual time in which a physical process under computer
study or control occurs, namely, the training takes place in
actual time over the Internet."
As further support therefor, the Examining Attorney
notes that he has made of record, with his denial of applicant's
request for reconsideration of the final refusal, "fifty
excerpted articles in which the wording REAL TIME was used to
describe training services."2 Relevant examples thereof include
the following (emphasis added):
"... provide on-line and real-time
training to employees ...." -- Chicago
Tribune, January 18, 1996;

"... working on delivering real-time
training programs over the Internet ...." --
Plastics News, July 3, 2000;

2 Although the denial of reconsideration states only that the excerpted
articles were retrieved "from the examining attorney's search in a
computerized database," it is presumed that the "NEXIS" database was
utilized inasmuch as the Examining Attorney, in his brief, cites In re
National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984), a case
involving evidence obtained from the "NEXIS" database, for the
proposition that the Board "has held that materials obtained through
computerized text searching are competent evidence to show the
descriptive use of terms." It is the better practice, however, for
the computerized database from which any excerpts have been derived to
be specifically identified.

Ser. No. 76487220
7
"Nortel successfully completed the real-
time training courses." -- Ventura County
Star (California), October 25, 2001;

"All courses are competency-based and
many come with a written guarantee. Students
have their preference of instructor led
classes or online eLearning, which they can
access 24-7 along with live, real-time
mentoring. To find out more about ACTT's
guaranteed training and the skills that are
in demand, contact ACTT ...." -- Boston
Herald, March 5, 2002; and

"... system to conduct online 'real
time' training and meetings with colleagues
...." -- Palm Beach Post (Florida), May 7,
2004;

Such excerpts serve to establish, according to the Examining
Attorney, that "in relation to the applicant's services[,] the
term REAL TIME is descriptive of a characteristic or feature of
the training services, namely, the training services are provided
in real time."
Utilizing a similar approach, the Examining Attorney
argues with respect to the term "mentoring" that "[i]n relation
to the applicant's services, the term MENTORING indicates a
characteristic or feature of the applicant's services in that the
training is provided by mentors or teachers." In particular, the
Examining Attorney notes that he has made of record a definition
from The American Heritage Dictionary of the English Language
(3rd ed. 1992) of the term "mentoring" as meaning "to serve as a
trusted counselor or teacher, especially in occupational
settings." He also points out that, as additional evidence of
the mere descriptiveness of such term, he has made of record a
third-party registration of the mark "S.I.S.T.A.S. MENTORING
Ser. No. 76487220
8
SISTERS INTEGRATING STAYING TOGETHER ALWAYS SURVIVING" and design
for, inter alia, "educational services, namely, mentoring
services to young women and girls" in which the word "MENTORING"
is disclaimed.3
The Examining Attorney, furthermore, observes that
"applicant's specimen of record also supports the conclusion that
the wording MENTORING in the [applicant's] mark is descriptive in
relation to applicant's services," noting that such specimen,
underneath the language "Real Experts solving Real Problems in
Real Time," states among other things that (emphasis added):
That's what Global Mentoring's Real Time
Mentoring is all about! Users now have
access to certified mentors 24x7 to gain
assistance and guidance throughout their
online training. Having the ability to chat
with certified mentors and access an
environment that fosters community learning
is key to the success of distance learning.

....

Each user has ... the ability to select
topic-specific classrooms to chat in. Each
topic-specific classroom is monitored by
certified mentors 24 hours a day, 7 days a
week.

Your users can chat with our mentors to
clarify concepts, seek expert help and even
ask for guidance regarding certifications.
....

Such specimen, we note, also states in pertinent part that
(emphasis added):
The Real Time Mentoring environment is the
first of its kind to offer Person-2-Person
Chat. At any time during a classroom
session, your employee and/or mentor can

3 Reg. No. 2,692,430, issued on March 4, 2003.

Ser. No. 76487220
9
initiate a private conversation. This P2P
chat allows the user to engage in further
discussions with a personal mentor for
further private training. ....

While conceding in his brief that "[a] mark which
combines descriptive terms may be registrable if the composite
creates a unitary mark with a separate, nondescriptive meaning,"
the Examining Attorney concludes, in light of the above showing
of the mere descriptiveness of the terms "real time" and
"mentoring" in relation to applicant's training services, that:
When viewed together, the wording ... REAL
TIME MENTORING indicates the exact nature of
the applicant's services as training services
provided by a mentor in the field of computer
applications and technical training for
business over the Internet. Thus, the
applicant's mark is merely a combination of
descriptive terms which do not create a
unitary mark with a separate, nondescriptive
meaning.

As support for such conclusion, the Examining Attorney asserts
that, with his denial of applicant's request for reconsideration,
he made of record information "excerpted [from] web pages from
the examining attorney's search on the Internet" which "directly
addresses the use of the entire wording in the mark to indicate
the descriptive nature of the wording in relation to training via
the Internet." Such information specifically includes the
following (emphasis added):
"If you are interested in engaging in an
individual, real time mentoring session,
please review AIA's calendar and then
recommend at least 2 or 3 different times
when you're available so we can find a
mutually convenient time to connect online."
-- www.awakening.net/Chat.html (as of July 4,
2004);

Ser. No. 76487220
10
"Each [training] simulation is linked
directly and interactively to myriad decision
support tools, references, micro- and full-
length courses, community interactions, and
live, real-time mentoring by recognized
experts within the appropriate domain" --
www.mindsim.com/MindSim/Corporate/simulation-
.html (as of August 5, 2004);

"Developed by NJIT's Division of
Continuing Professional Education, the NJIT
WebMeister Certificate is an Internet-based
learning program covering the same course
material as the WebMaster Fundamentals
Program for adult learners. Students convene
for three hours each Tuesday and Thursday for
intensive, interactive on-line classes
covering relevant areas of web development.
NJIT mentors facilitate collaborative,
electronic discussions asynchronously every
day and grades [sic] electronic self-
assessments, assignments, and examinations.
Mentors are also available on-line for real-
time mentoring." -- www.njit.edu/News/-
Releases/30.html (as of August 17, 2004);

"The advanced network offers students,
faculty and the community new opportunities
to communicate through such technological
innovations as international video
conferencing, distance or e-learning,
electronic field trips, video-on-demand,
real-time video streaming, on-line course
work, and real-time mentoring." -- www-
.findarticles.com/p/articles/mi_mDIGK/is_22_-
15ai_86041675 (as of August 24, 2004) and
www.opticallynetworked.com/news/article.php/-
905091 (as of August 28, 2004);

"For resellers, the advent of Web-based
learning communities is a huge boom,
providing them with the opportunity to market
and sell branded training services to their
customers without having to invest in the
infrastructure needed to do this. Instead,
... customers can interact with the ... new
Web-based learning community. The community
is hosted by a third-party that also handles
all of the back-end processes such as
billing, introducing new courseware and
updates, and managing the real-time mentoring
interaction between experts and learners." --
Ser. No. 76487220
11
www.findarticles.com/p/articles/mi_m3563/is_-
37_15/ai_57386627 (as of September 3, 2004);

"How do we blend the best of synchronous
(live) events with authored asynchronous (on-
demand) events? This is a hot question as
organizations start to expand their on-line
learning offerings. .... I would love to be
able to offer learners a stronger integration
of threaded discussions, real-time mentoring,
scheduled audio-graphic presentations and
authored ... products." -- www.masie.com/-
masie/default.cfm?trends=105&page=trends-
display (as of September 5, 2004);

"The SmartForce solution features the
industry's largest body of e-Learning
content, technologies for the delivery and
management of learning, collaboration tools
with real-time mentoring and a learning
community of more than two million users." --
www.e-learningzone.co.uk/news_3q.html (as of
September 6, 2004);

"... Elluminate, Inc., a leading
provider of live eLearning ..., and Thomson
Higher Education ... announced today that the
companies have extended a multi-year
agreement to use Elluminate's vMentor
service .... This service provides real-time
mentoring to students that purchase many of
Thomson Higher Education textbooks.
....
Using vMentor, Thomson textbook
customers now have on-demand, instant access
to highly qualified instructors to help them
learn." -- www.elluminate.com/press_Thomson-
.jsp (as of September 8, 2004); and

"Information Builders' eLearning
initiative allows you to customize a
curriculum that includes a library of self-
paced tutorials as well as eLearning
seminars. Our live, online seminars are
taught by instructors for real-time
mentoring. .... Use Information Builders'
eLearning curriculum as stand-alone training
or in complement with traditional classroom
instruction." -- education.informationbuil-
ders.com/edu/courses/elearning/elearning.jsp
(as of September 8, 2004).

Ser. No. 76487220
12
As further support for his position, the Examining
Attorney refers in his brief to the "excerpted article of record
... from the Boston Herald, March 5, 2002 [edition]," which as
previously reproduced in relevant part herein shows "use of the
entire wording in the applicant's mark in a descriptive manner to
refer to educational services" by stating that: "Students have
their preference of instructor led classes or online eLearning,
which they can access 24-7 along with live, real-time mentoring"
(emphasis added). Moreover, while not mentioned in his brief, we
note that as stated in the final refusal, the Examining Attorney
made of record excerpts from five "websites obtained from the
Internet on February 20, 2004" which "show use of the wording
REAL TIME MENTORING in connection with educational services
offered on the Internet" by various third parties. Such evidence
also demonstrates, as set forth in the final refusal, that "[t]he
term MENTORING is not a specialized term used in connection with
training services" but, rather, "[a]s indicated by the webpages,
the term is often used in connection with the wording real time."
Representative examples thereof include, in addition to the
excerpt quoted above from www.awakening.net/Chat.html regarding
"Insight Mentoring Chat Sessions, the following (emphasis added):
"Virtually no other [training] system
gives you an online community that will help
you overcome obstacles (both through real
time mentoring and asynchronous online
tutorials)." -- www-ed.fnal.gov/lincon/w99/-
projects/muve/student_beginning.htm;

"SmartForce is the world's largest e-
Learning company. ....
....
Ser. No. 76487220
13
SmartForce: ... Offers real-time
mentoring through the world's largest in-
house mentoring organization. ....
....
SmartForce e-Learning is different, and
better than any other e-Learning. It is
different because it is not just web
distribution of courses .... It is a next
generation e-Learning environment made up of
over 20,000 e-Learning objects that can be
assembled on-the-fly to create truly
personalized, truly collaborative learning
experiences .... It is an environment that
is moderated by humans...live subject experts
they call SmartMentors that are instantly
accessible to answer questions any time of
day or night, 7 days a week, 365 days a year.
No other e-Learning offers live, instant
mentoring." -- www.itec.suny.edu/scsys/cbt/-
Doc/SFdescription.htm;

"Kidlink Workshop For Principals of
Schools
....
Contents: ...
4. Teaching, Learning,
Collaborating: Tapping the Kidlink
Networking Opportunities
... Real-Time Mentoring, on-line
leadership development." -- www.-
kidlink.org/kie/ws/principals.html; and

"All Strategem employees have unlimited
access to eLearning courses with real-time
mentoring, Interactive seminars, workshops,
and white papers are also offered. .... The
SmartForce course offerings are adjusted
periodically." -- www.strategemconsulting-
.com/careers/education.html.

The Examining Attorney, therefore, maintains in his
brief that "[t]he plain meaning of the wording in the applicant's
mark when viewed in relation to the applicant's services, in
addition to the nature of the wording as used in the marketplace
as evidence [sic] by the excerpted article and web pages of
record[,] establish the [merely] descriptive nature of the
applicant's training services as [being] provided by means of
Ser. No. 76487220
14
real time mentoring." With respect, however, to applicant's
reliance on the absence of disclaimers of the terms "REAL TIME,"
"MENTOR" or "MENTORING" in various third-party registrations as
evidence supporting applicant's argument that the Patent and
Trademark Office does not consider such terms to be merely
descriptive of educational or training services, the Examining
Attorney contends that:
[T]hird-party registrations are not
conclusive on the question of
descriptiveness. Each case must be
considered on its own merits. A proposed
mark that is merely descriptive does not
become registrable simply because other
similar marks appear on the register. In re
Scholastic Testing Service, Inc., 196 USPQ
517 (TTAB 1977); TMEP §1209.03(a). .... In
this case, the evidence of record fully
supports the examining attorney's
determination that the applicant's mark is
[merely] descriptive in relation to the
applicant's services.

Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "REAL TIME MENTORING" is
merely descriptive of applicant's "training services in the field
of computer applications and technical training for businesses
via the Internet." The evidence made of record by the Examining
Attorney, along with applicant's specimens of use, demonstrate
that such term immediately conveys, without need for speculation
or conjecture, that a significant feature, function, or
characteristic of applicant's services is that they provide
mentoring in real time, that is, mentoring is offered to students
as or while the training is rendered. In the context of
Ser. No. 76487220
15
applicant's services, there is nothing in the term "REAL TIME
MENTORING" which is incongruous, ambiguous or suggestive, nor is
there anything which would require the exercise of imagination,
cogitation or mental processing, or necessitate the gathering of
further information, in order for the merely descriptive
significance thereof to be readily apparent to customers for and
users of applicant's training services. Instead, the term "REAL
TIME MENTORING" conveys forthwith that a significant aspect of
the provision of such services is the online availability to
students, during the actual time in which training is provided
(i.e., in real time), of a teacher or counselor (i.e., a mentor)
to answer students' questions and otherwise facilitate learning
(i.e., mentoring).
As to the third-party registrations relied upon by
applicant, it is indeed the case that the majority of those
specifically mentioned by applicant (as recited previously
herein) do not contain a disclaimer. In particular, none
contains a disclaimer of "MENTOR" or "MENTORING," although half
(six of 12) of the others do contain a disclaimer of "REAL TIME"
or its equivalents "REAL-TIME" and "REALTIME"4 and thus, in such

4 See Reg. No. 2,691,292, issued on February 25, 2003 for the mark
"REAL TIME KNOWLEDGE" for "providing information and interpretation of
information in the healthcare field"; Reg. No. 2,258,519, issued on
July 6, 1999 for the mark "REAL-TIME INNOVATIONS" for "computer
software for use in real-time system development"; Reg. No. 1,987,523,
issued on July 16, 1996 for the mark "REAL-TIME WORKSHOP" for
"computer software for real-time control and simulation"; Reg. No.
2,648,106, issued on November 12, 2002, for the mark "REAL DATA. REAL
TIME." for "medical and dental insurance administration services";
Reg. No. 2,507,504, issued on November 13, 2001 for the mark "REAL-
TIME STUDIO" for "computer software for use by developers in designing
and documenting ... applications in the field of real-time systems";
and Reg. No. 2,187,475, issued on September 8, 1998 for the mark "REAL
Ser. No. 76487220
16
instances, evidence the mere descriptiveness thereof in
connection with the identified goods and services. Nonetheless,
to the extent that a majority of the third-party registrations
could arguably be said to lend some support to applicant's
position, they fail to demonstrate that the term "REAL-TIME
MENTORING" is suggestive rather than merely descriptive of
applicant's services or collectively serve to create any doubt
with respect thereto, given the evidence introduced by the
Examining Attorney.
In this regard, it is well settled that while uniform
treatment under the Trademark Act is an administrative goal, our
task in an ex parte appeal is to determine, based on the record
before us, whether applicant's mark is merely descriptive. As
has often been noted by the Board, each case must be 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 the particular marks which are the subjects
thereof is simply not controlling in this case. In particular,
as our principal reviewing court noted in In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001),
"[e]ven if some prior registrations had some characteristics
similar to [applicant's] application, the ... allowance of such
prior registrations does not bind the Board or this court." See
also, In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 (TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d

TIME REMOTE" for "teleconferencing services ... supported by
professional facilitators."
Ser. No. 76487220
17
1753, 1758 (TTAB 1991). Instead, the question of whether a mark
is merely descriptive must be determined based on the evidence of
record at the time registration is sought. See, e.g., In re Sun
Microsystems Inc., 59 USPQ2d 1084, 1088 (TTAB 2001) [in holding
"AGENTBEANS" merely descriptive of computer software for use in
development and deployment of application programs on a global
computer network, Board noted its agreement "with the Examining
Attorney that the 'vocabulary used in the computer field changes
rapidly' and [that] registration of some of the [third-party]
marks may have resulted from the lack of evidence that would have
supported a refusal at the time the underlying applications were
reviewed"]; and TMEP Section 1209.03(a) (4th ed. 2005).
Accordingly, because the evidence of record herein on
the whole demonstrates that, as explained above, the term "REAL
TIME MENTORING" forthwith conveys a significant feature, function
or characteristic of applicant's training services, it is merely
descriptive thereof within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.