Indexing Technologies, Inc.

Trademark Trial and Appeal Board

Aug 13, 1999

No. 74695746 (T.T.A.B. Aug. 13, 1999)

Paper No. 20
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUGUST 13, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Indexing Technologies, Inc.
________
Serial No. 74/695,746
_______
Philip Furgang of Furgang & Adwar, LLP for Indexing
Technologies, Inc.
Wanda Kay Price, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney)
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Indexing Technologies, Inc. has filed an application
to register the mark INDEXING TECHNOLOGIES for “wholesale
sales services of material handling equipment, indexing
devices, indexing components and parts therefor.”1
Registration has been finally refused on the basis

1 Application Serial No. 74/695,746, filed June 29, 1995. The
claimed dates of first use and first use in commerce are January
1, 1995, and May 9, 1995, respectively. The acceptability of the
recitation of services is an issue in this appeal and will be
fully addressed later in this decision.
Ser. No. 74/695746
2
that under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), when used on applicant’s services, the mark is
merely descriptive of them. The Examining Attorney also
made final the requirement for a more definite recitation
of services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs.2 Applicant requested
an oral hearing, but subsequently waived its right thereto.
Turning first to the question of the recitation of
services, the Examining Attorney did not accept the
original identification of services, and suggested, if
appropriate: “wholesale distributorships featuring material
handling equipment, namely,... (specify)..., indexing
devices, namely,... (specify)..., indexing components,
namely,... (specify)..., and parts therefor.” In response,
applicant offered the following amendment to the
identification of services: “wholesale distribution
featuring material handling equipment, indexing devices,
indexing components and parts therefor.” Applicant’s

2 In its brief, applicant referred to an “attached brochure”
about applicant’s services, explaining that applicant believed
the brochure had been submitted as part of the application or in
responses to Office actions. (Brief, p. 4). There was no
brochure attached to applicant’s brief. However, in light of
applicant’s assertion that it was submitted as part of the
application (or other responses), we assume that the “brochure”
was the same as the specimens submitted with the application.
The specimens were available for the Board’s consideration.
Ser. No. 74/695746
3
proposed amendment to the identification of services has
also been rejected by the Examining Attorney as indefinite.
Both applicant and the Examining Attorney argued the
issue of a proper identification of services based on the
proposed amended identification of services.3 Thus, our
decision relates to the question of the acceptability of
the proposed amended identification.
Section 1(a)(1)(A) of the Trademark Act, 15 U.S.C.
§1051(a)(1)(A), requires that the written application
specify the goods or services on or in connection with
which applicant uses the mark. Trademark Rule
2.33(a)(1)(v) requires, in relevant part, that a trademark
application must set forth “the particular goods or
services” with which the mark is used. Further, the
identification of goods or services must be specific and
definite. See TMEP §§804.01, and 1301.05. It is within

3 The only exception is that on page 4 of its brief, applicant
states that “...the definition of goods as originally filed
appropriately and accurately decribe (sic) the goods.” (Emphasis
in original.) (We presume that applicant did not mean this as a
reference to an identification of goods, but rather, was
referring to the goods featured in its “wholesale distribution”
services.) However, in the conclusion of applicant’s brief, it
requests that the Board accept the proposed amended
identification of services (p. 8). To whatever extent, if any,
applicant seeks to have the original identification of services
deemed acceptable by the Board, such request is denied. The
activity of “sales services” is generally unacceptable as
constituting a “service” because the activity may refer to an
applicant’s merely selling its own goods, which is not a service.
Ser. No. 74/695746
4
the discretion of the Patent and Trademark Office to
require that the goods or services be specified with
particularity. See In re Societe Generale des Eaux
Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986),
and cases cited therein, rev’d on other grounds, 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1998).
First, the Examining Attorney’s requirement that
applicant specify the items within the fields applicant has
already identified is unnecessary. That is, applicant
already indicated that its services feature “material
handling equipment, indexing devices, indexing components
and parts therefor.” Because this is a service mark
identification, there is no need to further list the items
included under the categories of material handling
equipment, indexing devices, and indexing components.
The problem with applicant’s proposed identification
lies with the term “distribution.” As used in an
identification of services, the Office has interpreted the
term broadly to include a variety of functions related to
the delivery of goods. (See, e.g., in the PTO Acceptable
Identification of Goods and Services Manual under services,
entries such as “Distribution of motion pictures,”
“Distribution (Handbill),” “Distribution (Mutual Fund),”
and “Distribution (News analysis and features).” By
Ser. No. 74/695746
5
contrast, the term “distributorship(s)”4 is used more
narrowly to mean “standing between,” or being the middle
link in the distribution chain. That is, in the context of
identification and classification of services in this
Office, “wholesale distribution” is deemed to be much
broader than applicant’s specific activity, namely that
“[a]pplicant distributes its goods from a warehouse to
retailers.” (brief, p. 2). Under Office identification and
classification requirements, this phrase is unacceptable
for distributorship services. To the extent applicant has
not identified its services as “wholesale distributorship
featuring material handling equipment, indexing devices,
indexing components and parts therefor,” the Examining
Attorney’s requirement for a more definite identification
of services is proper.
We turn now to the refusal to register on the ground
of mere descriptiveness. It is well settled that a term is
merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it immediately conveys information
concerning an ingredient, quality, characteristic or

4 Applicant’s concern that it does not establish wholesale
distributorships is noted. The Examining Attorney’s general
requirement that applicant use the term ‘distributorship’ rather
than ‘distribution’ is correct. However, according to our
understanding of Office practice, it should have been acceptable
if applicant had proposed the term in the singular.
Ser. No. 74/695746
6
feature thereof, or if it directly conveys information
regarding the nature, function, purpose or use of the goods
or services. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). It is not necessary that a
term or phrase describe all of the properties or functions
of the goods or services in order for it to be considered
merely descriptive thereof; rather, it is sufficient if the
term or phrase describes a significant attribute of the
goods or services. Moreover, whether a term or phrase 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 on or in
connection with those goods or services, and the possible
significance that the term or phrase would have to the
average purchaser of the goods or services because of the
manner of its use. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). See also, In re Consolidated Cigar Co.,
35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991). Consequently, “[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).
The Examining Attorney contends that inasmuch as the
term “indexing” clearly describes a feature of applicant’s
Ser. No. 74/695746
7
services, and in view of the dictionary definition of
“technology” or “technologies,” it is clear that when
considered as a whole, in connection with applicant’s
services, the applied-for mark is merely descriptive.
Specifically, the Examining Attorney stated that “INDEXING
TECHNOLOGIES” refers to “materials technology, namely,
indexing devices and indexing components used to achieve
the commercial or industrial objective of indexing.”
(brief, p. 4).
The Examining Attorney provided the following
definition of “technology” or “technologies” from Webster’s
II New Riverside University Dictionary (1994):
“1.a. The application of science esp.
to industrial or commercial objectives. b.
The whole body of methods and materials used
to achieve such objectives. 2. The body of
knowledge available to a civilization that
is of use in fashioning implements,
practicing manual arts and skills, and
extracting or collecting materials."
Applicant urges reversal of the refusal on the basis
that the mark INDEXING TECHNOLOGIES, when viewed in its
entirety, is suggestive, not merely descriptive, of
applicant’s services; that common words, when used as a
composite mark, may become a valid trademark; that the
Examining Attorney’s definition of “technologies” is “so
obscure as to have no meaning whatsoever” (brief, p. 5);
Ser. No. 74/695746
8
that the terms “technology” or “technologies” have been
“held to be only suggestive of goods” (brief, p. 5); that
“[I]f competitors do not need the mark INDEXING
TECHNOLOGIES to describe their goods, then the mark is
suggestive and deserves trademark protection” (Reply brief,
p. 7); and that doubt is resolved in applicant’s favor.
As stated by our primary reviewing court in the case
of In re Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987) (SCREENWIPE held generic for wipes
that clean computer and television screens), the Patent and
Trademark Office may satisfy its evidentiary burden by
means of dictionary definitions showing that the “separate
words joined to form a compound have a meaning identical to
the meaning common usage would ascribe to those words as a
compound”. See also, In re Analog Devices Inc., 6 USPQ2d
1808 (TTAB 1988); aff’d in op. not for pub., 871 F.2d 1097,
10 USPQ2d 1879 (Fed. Cir. 1989). Here the Examining
Attorney has met the burden of establishing a prima facie
case of mere descriptiveness.
Although the term “indexing” is not specifically
defined in the record before us, it appears to refer to a
type of technology used with machine tools and tooling.
The word “indexing” appears within the original and
proposed amended identification of services, and applicant
Ser. No. 74/695746
9
also clearly uses the word descriptively on its specimens
of record, as shown by the examples which follow: (1) “Your
single source for O.E.M.5 quality indexing components and
associated tooling”; (2) “Heavy-duty indexing and rotary
tables for machine tool applications”; (3) “Indexing tool
turrets and tooling for CNC lathes”; and (4) “Precision cam
manufacturing and a comprehensive range of O.E.M. quality
mechanical cam-driven indexing and positioning devices.”
In this context, the term clearly refers to the use of
highly calibrated accessories or specific precision systems
in conjunction with machine tools.
By applicant’s own words, the service applicant offers
involves marketing indexing devices and indexing
components. (See e.g., applicant’s brief, p. 5, “Applicant
distributes goods including, but not limited to, indexing
devices and indexing components.”; and in applicant’s
Response filed September 20, 1996, p. 1, applicant stated
that the term INDEXING TECHNOLOGIES “may suggest the type
of goods distributed” by applicant, and on p. 2, that some
of the goods distributed by applicant “undeniably perform
an indexing function.”)

5 Original equipment manufacturers.
Ser. No. 74/695746
10
The dictionary definition of the term “technology”
submitted by the Examining Attorney includes the plural
“technologies” and one definition refers to “The
application of science esp. to industrial or commercial
objectives. b. The whole body of methods and materials
used to achieve such objectives.” This definition, as
applied to services in the field of industrial engineering,
is distinguishable from its application to specifically
listed goods. In the broader context of services, the
dictionary definition of “technology” shows that the term
is well-suited for applicant’s distributorship of precision
devices -- the latest machine tool technology.
Applicant’s specimens of record include the following
bulleted statements: “‘State-of-the-art’ tool turrets and
tolling for CNC lathes,” and “Ultra precision rotary tables
for inspection machines and CMM applications.” (Emphasis
added.) Thus, applicant touts its services by emphasizing
the technologically advanced aspects of the goods offered
through its distributorship service.
The term INDEXNG TECHNOLOGIES, when used in connection
with applicant’s services (“wholesale
distribution/distributorship featuring material handling
equipment, indexing devices, indexing components and parts
therefor”), directly describes those services to the
Ser. No. 74/695746
11
relevant purchasers, e.g., those knowledgeable about the
technology of machine tools.
Accordingly, we find applicant’s mark is merely
descriptive. Specifically, we agree with the Examining
Attorney that the words INDEXING TECHNOLOGIES, as applied
to applicant’s services, immediately convey to consumers
that the services involve the latest technology in material
handling and indexing equipment. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996); In re
Energy Products of Idaho, 13 USPQ2d 2049 (TTAB 1989); and
In re Truckwriters Inc., 219 USPQ 1227 (TTAB 1983), aff’d
unpubl’d Appeal No. 84-689 (Fed. Cir., November 1, 1984).
The cases of In re Hutchinson Technology Inc., 852
F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); and Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054 (TTAB 1989), cited by applicant, do not require
a different result herein.6 In the Hutchinson case, supra,
the Court majority’s discussion of the term “technology”

6 Applicant also cited the case of Equine Technologies Inc. v.
Equitechnology Inc., 68 F.3d 542, 36 USPQ2d 1659 (1st Cir. 1995).
However, we find that case is not helpful in resolving an ex
parte refusal to register at the PTO because there the appellate
court was reviewing the propriety of the district court’s
granting of a preliminary injunction in a trademark infringement
lawsuit over goods (hoof pads for horses). The Board’s
jurisdiction is limited by Section 17 of the Trademark Act.
Ser. No. 74/695746
12
was within the context of whether the mark HUTCHINSON
TECHNOLOGY was primarily merely a surname, and the Court
remanded the case for a disclaimer of the term
“technology.” In the case now before the Board applicant
provides services, not goods, and the refusal to register
is based on mere descriptiveness, not a surname.
In the Concurrent case, supra, the Board found the
mark CONCURRENT TECHNOLOGIES CORPORATION was not merely
descriptive for printed electronic circuit boards based on
the absence of evidence of any descriptive uses of the
terms “concurrent” or “concurrent technologies.” The
involvement of goods, not services, and the lack of
evidence of any descriptive use in that case, are to be
distinguished from the case now before the Board. In the
instant case, there is dictionary evidence of the meaning
of the term “technologies” as specifically referring to the
application of science to industrial objectives, and
applicant itself has repeatedly used “indexing” in a merely
descriptive manner.
When the mark INDEXING TECHNOLOGIES is viewed as a
whole, in the context of applicant’s services, we find that
the purchasing public would, without imagination or
conjecture, readily understand the words to mean what
applicant’s services entail.
Ser. No. 74/695746
13
Finally, applicant’s argument regarding the lack of
evidence that applicant’s competitors use the term to
describe their services is not persuasive. The fact that a
term may currently be in use by only the applicant cannot
support the registration sought if the mark as used
projects only a merely descriptive significance. See In re
Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994).
Decision: The requirement for a more specific
identification of services is affirmed (as to the use of
the term “distributorship”).
The refusal to register under Section 2(e)(1) is
affirmed.
T. J. Quinn
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board