Illinois Department of Commerce and Economic Opportunity

Trademark Trial and Appeal Board

Sep 24, 2009

No. 77208145 (T.T.A.B. Sep. 24, 2009)

Mailed:
September 24, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Illinois Department of Commerce and Economic
Opportunity
________

Serial No. 77208145
_______

Lisa A. Iverson and Jeremy M. Roe of Neal & McDevitt LLC
for Illinois Department of Commerce and Economic
Opportunity.

Tamara G. Frazier, Trademark Examining Attorney, Law Office
116 (Robert L. Lorenzo, Managing Attorney).
_______

Before Drost, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

The Illinois Department of Commerce and Economic
Opportunity (applicant) has applied to register the mark
shown below on the Principal Register for services
identified as “career services, namely, assisting
individuals with employment opportunities through providing
an online searchable database featuring ad listings and
employment opportunities; and business advisory services,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77208145
2
consultancy and information” in International Class 35 and
“career services, namely, assisting individuals with
employment opportunities through providing employment
training and online information and news in the field of
employment training” in International Class 41.

The application includes a disclaimer of “ILLINOIS” and the
following statements:
Color is not claimed as a feature of the mark.

and

The mark consists of a circular shape with three
dots with the words "ILLINOIS WORKNET."

The application is based on applicant’s statement of a bona
fide intention to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b), as to both classes.
The Examining Attorney has issued a final refusal on
the grounds that applicant has failed to comply with a
requirement to disclaim “WORKNET.” The Examining Attorney
required the disclaimer based on the determination that
WORKNET is merely descriptive of the services identified in
Serial No. 77208145
3
both classes. Applicant has appealed. Applicant and the
Examining Attorney have filed briefs. We affirm.
Trademark Act Section 6, 15 U.S.C. § 1056, authorizes
the Examining Attorney to require a disclaimer of “an
unregistrable component of a mark,” including merely
descriptive matter. The Trademark Manual of Examining
Procedure (5th ed. 2007) (TMEP) states USPTO policy with
regard to disclaimer requirements. See TMEP § 1213. In
this case, first we must determine whether WORKNET is
merely descriptive of the services in both classes, and
second, we must determine whether the disclaimer
requirement is otherwise proper.
At the outset, we note that applicant points out
several times that the Examining Attorney issued the
disclaimer requirement, withdrew it and then reinstated the
requirement and made it final. Applicant implies that this
procedure was improper. We find no procedural error in the
reinstatement of the disclaimer requirement after
withdrawing it. More importantly, the only issue properly
before us in this appeal is the substantive propriety of
the disclaimer requirement. See, e.g., In re Sambado & Son
Inc., 45 USPQ2d 1312, 1314 (TTAB 1997) (“The Board's
determination on appeal is to be limited to the correctness
of the underlying substantive refusal to register. The
Serial No. 77208145
4
Board will not second guess the Examining Organization’s
procedural determination….”).
A term is merely descriptive of goods or services
within the meaning of Section 2(e)(1) if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose 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). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant attribute
or function of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
identified in the application, and the possible
significance that the term would have to the average
purchaser or user of the goods or services. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The question whether a mark is merely descriptive is not
Serial No. 77208145
5
determined by asking whether one can guess from the mark
what the goods or services are, but rather by asking, when
the mark is seen on or in connection with the goods or
services, whether it immediately conveys information about
their nature. See In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998).
Also, when two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If,
on the other hand, each component retains its merely
descriptive significance in relation to the goods or
services, then the resulting combination is also merely
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) (SMARTTOWER merely descriptive of
commercial and industrial cooling towers).
Applicant argues that WORKNET is suggestive of the
identified services because WORKNET “… does not immediately
describe the nature of Applicant’s services and the term
WORKNET is capable of different interpretations….”
Applicant’s Brief at 5. Applicant argues further,
“Consumers must use their imagination to determine the
services Applicant is offering under its ILLINOIS WORKNET
(and Design) mark. Consumers must engage in ‘an exercise
of mental gymnastics and extrapolation’ to determine
Serial No. 77208145
6
Applicant’s services upon encountering the mark.” Id. at 6
(citation omitted).
In its Reply Brief, applicant argues more specifically
that “net” has multiple meanings, including, “as an
abbreviation for ‘Internet’ and as an abbreviated version
of the word ‘network.’” Reply Brief at 3. More broadly,
applicant argues that “net” as used in the mark “has no
single understood meaning.” Id. In this regard applicant
notes the numerous meanings of record, not only for “net,”
but also for “work.” Applicant poses the following
possible, alternative meanings for WORKNET:
• An online search service for job searching and
related capabilities;
• A network of persons organized for employment
opportunities;
• A telephone network for a corporation; and
• An information technology network used in a
work environment, such as an intranet.

Id. at 4.
The Examining Attorney argues that WORKNET is merely
descriptive of the identified services and states, “… the
term ‘work’ is defined as ‘employment, as in some form of
industry; one’s place of employment.’ The word ‘net’ is
the abbreviation for ‘the Internet’ and ‘network.’”
Examining Attorney’s Brief at 4. Applicant does not
dispute that “work” and “net” possess these meanings, among
others. We also note the following definition of “network”
Serial No. 77208145
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in the record: “[noun] 7. an association of individuals
having a common interest, formed to provide mutual
assistance, helpful information or the like… [verb] 8. to
cultivate people who can be helpful to one professionally,
esp. in finding employment or moving to higher position….”
Attachment to Final Office Action of August 5, 2008 from
dictionary.reference.com.
The Examining Attorney argues further that the
evidence of record shows use of WORKNET by third parties,
and applicant, to identify/describe the types of services
identified in the application.
The record includes copies of pages from the following
websites:
worknet.wisconsin.gov – a Wisconsin State site
which includes the heading Wisconsin’s WORKnet
and the subheading “Wisconsin’s Workforce and
Labor Market Information System.” Attachment to
Office Action of September 24, 2007.

sjcworknet.org – a site associated with San
Joaquin County which includes the heading
“worknet of San Joaquin County” and the
subheading “Job Seeker Services, Employer
Services, Community Resource Directory, Labor
Market Information….” Id.

myworknet.com – a site associated with Fairfield
County, Ohio, which includes the heading
“WorkNet” and the subheading “Work Readiness” and
“buttons” identified as “Hot Jobs,” “Job Search”
and “Area Employers.” Id.

and

Serial No. 77208145
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worknetpinellas.org – a site apparently
associated with the Pinellas County in Florida,
which states: “Worknet Pinellas has partnered
with PTEC, St. Petersburg College, the Pinellas
Education Foundation and Pinellas County Economic
Development to bring you an information
technology industry forum that will focus on
current and emerging workforce needs.” Just
below a logo for WorkNet Pinellas the site
includes “buttons” identified as “Search Jobs”
and “Post Jobs.” Attachment to Office Action of
March 5, 2009.

The record also includes copies of pages apparently
from illinoisworknet.com and connected with applicant with
the heading “ILLINOIS WORKNET SYSTEM” which state, among
other things: “The workNet DuPage Center is an Illinois
workNet center; the Illinois workNet portal is designed to
assist job seekers and employers in fulfilling their
employment needs.” Attachment to Final Office Action of
August 5, 2008.
Based on the entire record we conclude that WORKNET is
merely descriptive of “career services, namely, assisting
individuals with employment opportunities through providing
an online searchable database featuring ad listings and
employment opportunities; and business advisory services,
consultancy and information” in International Class 35 and
“career services, namely, assisting individuals with
employment opportunities through providing employment
Serial No. 77208145
9
training and online information and news in the field of
employment training” in International Class 41.
The relevant definitions of “work” and “net” support
this conclusion. The evidence of third-party use of
WORKNET in connection with the same services, along with
applicant’s own use, confirms the fact that relevant
consumers would perceive WORKNET as describing the
identified services.
The fact that “work” and “net” may have additional
meanings in a different context is not persuasive. We must
consider WORKNET, and its component elements, in context,
as applied to the identified services. When we consider
WORKNET in that light, the only reasonable conclusion is
that relevant consumers will perceive both the component
elements and WORKNET as a whole to be merely descriptive.
Consumers are not likely to think of a telephone network
when they see “net” in this context. Nor are they likely
to think of a “work” of art when they see “work” in this
context. For the record, either relevant meaning of “net,”
that is, as in the “Internet” or “an association of
individuals having a common interest, formed to provide
mutual assistance, helpful information or the like” is
equally merely descriptive in this context.
Serial No. 77208145
10
Also, in view of the evidence of record, we reject
applicant’s argument that the combination of “work” and
“net” in this case results in a distinctive mark. The
whole is nothing more than the sum of its parts. There is
no double entendre, incongruity or other unusual aspect in
the combination which would transform the two merely
descriptive parts into an inherently distinctive whole.
Cf. In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983) (SNO-
RAKE for a snow-removal hand tool held not merely
descriptive).
Next, we consider applicant’s argument that the
disclaimer requirement is improper under USPTO policy
because the entire mark, including WORKNET, is unitary. As
we indicated above with regard to WORKNET, we likewise
conclude that there is no double entendre, incongruity or
other unusual aspect in the combined terms ILLINOIS WORKNET
which would render the combination distinctive and unitary.
Nor do we find anything in the display of the entire mark
which so connects WORKNET with the other word or design
elements in the mark to create a unitary effect such that a
disclaimer of WORKNET would be improper. Accordingly, we
reject applicant’s arguments that the requirement for a
disclaimer of WORKNET is improper because the entire mark
is unitary.
Serial No. 77208145
11
Applicant also argues that we should reverse because
the Examining Attorney’s position in this case is
inconsistent with actions taken with regard to other marks
which include WORKNET. To support this argument applicant
has provided information regarding a number of third-party
registrations, including many which are no longer active.
Applicant did not provide copies of the registrations.
First, we note that the information regarding the
third-party registrations applicant presented is not in
proper form. The Board does not take judicial notice of
office records related to third-party registrations;
applicants must submit appropriate copies of USPTO records
to make registrations of record in an appeal. In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re
Wada, 48 USPQ2d 1689, 1689 n.2 (TTAB 1998), aff’d, 194 F.3d
1297, 52 USPQ2d 1539 (Fed. Cir. 1999). However, in this
case the Examining Attorney did not object to the form of
the evidence, and the Examining Attorney did discuss the
evidence. Accordingly, based on the Examining Attorney’s
conduct, we deem the information applicant submitted with
respect to these third-party registrations of record.
However, we conclude that this evidence is of no benefit to
applicant. Cancelled or expired registrations are of no
probative value. More importantly, actions by examining
Serial No. 77208145
12
attorneys on other applications do not dictate the Board’s
determination in an appeal. We must decide each case on
its unique facts and record. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Accordingly we reject applicant’s arguments based on the
third-party registrations.
In sum, we conclude that WORKNET is merely descriptive
of “career services, namely, assisting individuals with
employment opportunities through providing an online
searchable database featuring ad listings and employment
opportunities; and business advisory services, consultancy
and information” in International Class 35 and
“career services, namely, assisting individuals with
employment opportunities through providing employment
training and online information and news in the field of
employment training” in International Class 41.
Furthermore, we conclude that the Examining Attorney’s
requirement that applicant disclaim WORKNET was proper in
all respects. For the record, we also reject applicant’s
argument that there is sufficient doubt here to warrant
reversal and publication.
Decision: We affirm the refusal under Trademark Act
Sections 2(e)(1) and 6 based on applicant’s failure to
disclaim WORKNET. If within 30 days of the date of this
Serial No. 77208145
13
decision applicant provides an acceptable disclaimer of
WORKNET, we will set this decision aside and reverse the
refusal under Sections 2(e)(1) and 6 in accordance with
Trademark Rule 2.142(g).