Home Junction, Inc.

Trademark Trial and Appeal BoardMar 30, 2009

No. 77300878 (T.T.A.B. Mar. 30, 2009)

Mailed: March 30, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Home Junction, Inc. ________ Serial No. 77300878 Filed: October 10, 2007 _______ Lynn M. Humphreys, Morrison & Foerster LLP, for Home Junction, Inc. Sean Crowley, Trademark Examining Attorney, Law Office 116, Michael W. Baird, Managing Attorney. _______ Before Walters, Walsh, and Mermelstein, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant seeks registration of WIKIPROPERTY (in standard characters) for “providing an on-line marketplace for real estate and real estate-related services” in International Class 35.1 Registration has been finally refused pursuant to Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark is primarily merely descriptive of the identified services. 1 Based upon the allegation of a bona fide intent to use the mark in commerce. THIS DECISION IS NOT A PRECEDENT OF THE TTAB Serial No. 77300878 2 We affirm. I. Descriptiveness A. Applicable Law A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the products for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the Serial No. 77300878 3 term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980). Even where individual terms are descriptive, combining them may evoke a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, without the combination of terms creating a unique or incongruous meaning, then the resulting combination is also merely descriptive. In re Tower Tech., 64 USPQ2d at 1317- 1318. B. Discussion Applicant’s services are identified as “providing an on-line marketplace for real estate and real estate-related services.” The examining attorney argues that applicant’s mark, WIKIPROPERTY, immediately informs applicant’s customers “that the services are in the field of real estate property and that the services will be provided through a user edited website known as a wiki,” Ex. Att. Br. at 9, and is therefore descriptive of them. The examining attorney and applicant have provided a number of dictionary definitions of the terms involved here, WIKI and PROPERTY. We reproduce several of each: Serial No. 77300878 4 wi-ki ... A collaborative website whose content can be edited by anyone who has access to it. THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2006)(online ed. at http://dictionary.com (Dec. 3, 2007)). wiki... Any collaborative website that users can easily modify via the web, typically without restriction. A wiki allows anyone, using a web browser, to edit, delete or modify content that has been placed on the site, including the work of other authors. This has been found to work surprisingly well since contributors tend to be more numerous and persistent than vandals and old versions of pages are always available. ... FREE ON-LINE DICTIONARY OF COMPUTING (2007)(online at http://dictionary.com (Dec. 3, 2007)). property ... 1 a thing or things belonging to someone. 2 a building and the land belonging to it. 3 Law the right to the possession, use, or disposal of something; ownership. 4 a characteristic ... 5 old-fashioned term for PROP COMPACT OXFORD ENGLISH DICTIONARY (online ed. at www.askoxford.com (Jan. 7, 2008)). property... 1. Something that is owned. ... 2. A parcel of land with a single owner. ... 3. The exclusive right of possessing, enjoying, and disposing of a thing. 4. ... Country property 5. An attribute or abstract quality associated with an object. 6. (computing) an editable parameter associated with an application, or its value. ... Serial No. 77300878 5 WIKTIONARY (online at http://en.wiktionary.org/ (Jan. 7, 2008)). And finally, because it seems inevitable, a wiki definition of “wiki” (offered by the examining attorney): Wiki ... A wiki is a page or collection of Web pages designed to enable anyone who accesses it to contribute or modify content, using a simplified markup language. Wikis are often used to create collaborative websites and to power community websites. The collaborative encyclopedia Wikipedia is one of the best-known wikis. Wikis are used in business to provide intranets and Knowledge Management systems. Ward Cunningham, developer of the first wiki software, WikiWikiWeb, originally described it as “the simplest online database that could possibly work.” “Wiki” ... is originally a Hawaiian word for “fast.” It has been suggested that “wiki” means “What I Know Is.” However, this is a backronym. WIKIPEDIA (online at http://en.wikipedia.org (Sept. 16, 2008))(footnotes omitted). There is no disagreement between applicant and the examining attorney over the correctness of any of these definitions. Rather, it is applicant’s position that the term “wiki” is vague, that wiki websites can look different depending on what software is used, that it “provides hardly any more descriptive value than the simple knowledge Serial No. 77300878 6 that something is ‘online,’” and that wiki websites can have “any number of different functions.” App. Br. at 2-3. Nonetheless, applicant does not seriously contest the descriptiveness of “wiki” as applied to its goods, going so far as to offer a disclaimer of the term in its Reply brief.2 Reply at 4. Indeed, applicant forthrightly states that its “website could be described as a ‘Real Property Wiki,’” App. Br. at 2, although it maintains that “[i]t could not be described as WIKIPROPERTY. This combination creates a new and different commercial impression.” Id. Applicant further argues that its mark is registrable, pointing to “a list of twenty records for live trademark registrations containing the word ‘wiki,’” on the Principal Register. What applicant is referring to appears to be a TESS search summary which lists twenty WIKI- formative marks, first submitted with its request for reconsideration of the final office action.3 However, this list of registrations does not include the goods or services for 2 A disclaimer of WIKI (or PROPERTY) would not be appropriate in this case because the compound term WIKIPROPERTY is unitary. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05(a) (5th ed. 2007). 3 Normally, such a list of registrations is not admissible, but in this case, the examining attorney did not object to its submission, so we consider the list to be of record for whatever value it may have, although the list is not sufficient to make the full records of the listed registrations of record. In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB 2007); In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). Serial No. 77300878 7 which each mark is registered, or other information, such as whether the marks were registered under the provisions of Trademark Act § 2(f).4 While we have considered this evidence, it is hardly persuasive on the issue of registrability of applicant’s mark. Applicant did properly submit the records of five registrations comprising WIKI- formative marks during examination. Applicant contends all this material “can be used to show a general consensus amongst Examining Attorneys” that the term is not descriptive. Reply at 2. On the contrary, we agree with the examining attorney that the registration of other WIKI- marks does not entitle applicant to registration of its mark. Each case must be judged on its own merits, based on its own record. As the examining attorney notes, some of these marks may have registered before “wiki” – a relatively new term – was commonly recognized as descriptive, or for other reasons. But whatever the reason, we are not in any way bound by the decisions of examining attorneys in other applications. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). 4 Applicant did submit full printouts of these registrations attached to its reply brief. However, this evidence is clearly untimely, and will not be considered. Trademark Rule 2.142(d) (“The record in the application should be complete prior to the Serial No. 77300878 8 We agree with the examining attorney that the term WIKI is clearly descriptive of an aspect of applicant’s services. Although wiki websites can cover a range of functions and activities, and can each have a different appearance, the term is known among the public, is well- defined, and easily fits within the scope of applicant’s on-line services. The remaining questions are whether PROPERTY is descriptive of applicant’s services, and whether that term, combined with WIKI, results in a descriptive mark. Applicant does not argue in its briefs that the term PROPERTY is not descriptive as applied to its services, although during examination, applicant argued that PROPERTY has many meanings and was thus vague. In any event, we find that PROPERTY is clearly descriptive as applied to applicant’s services. While the word – like many other words in English – has a variety of meanings, we must consider its meaning with reference to the identified services, and not in the abstract. Here, applicant’s services are specifically provided in relation to “real estate,” which is undeniably a form of property. filing of an appeal.”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Serial No. 77300878 9 While applicant does argue that the compound term WIKIPROPERTY is not descriptive of its services,5 we are not persuaded. The combination of terms in applicant’s mark does not create an impression different from its descriptive constituent parts. We have no doubt that upon seeing the mark, applicant’s customers would immediately, and without further conjecture, be apprised of a central aspect of the identified services, namely, the provision of – in applicant’s words – “a ‘Real Property Wiki.’” App. Br. at 2. II. Conclusion After careful consideration of the record evidence and argument, we conclude that applicant’s mark is merely descriptive of a feature, function, or characteristic of applicant’s identified services. 5 Applicant relies heavily on our non-precedential cases to make its point. App. Br. at 3-4, citing In re Sterling Commerce, Inc., App. No. 75308616 (TTAB May 31, 2000) (COMMERCE:COMMUNITY held not descriptive); In re Great Northern Enter., LLC, App. No. 78071887 (TTAB Aug. 5, 2004) (INDUSTRY PROCESS RE-ENGINERING held not descriptive); In re Platinum Technology, Inc., App. No. 74523159 (TTAB Aug. 27, 1999); In re Donell, App. No. 75527923 (TTAB Sept. 24, 2004)(BOO BOO CREAM held not descriptive). Our non-precedential decisions may be cited “for whatever persuasive value [they] might have.” Citation of Opinions to the Trademark Trial and Appeal Board, Official Gazette (Jan. 23, 2007). Conspicuously absent from applicant’s cited cases is the one we find most persuasive, In re Nvest, Inc., App. No. 77154507 (TTAB Oct. 8, 2008), in which the Board found the mark WIKINVEST descriptive of services identified as “providing financial information, news, commentary, analysis and consultation all in the field of finance; providing a computer database in the field Serial No. 77300878 10 Decision: The refusal to register under Trademark Act § 2(e)(1) is accordingly affirmed. of finance.” Nvest is directly on point and provides a convincing analysis of the facts and legal issues.