Institute of Industrial and Systems Engineers, Inc.

Trademark Trial and Appeal Board

Nov 23, 2020

87119574 (T.T.A.B. Nov. 23, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 10, 2020 Mailed: November 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Institute of Industrial and Systems Engineers, Inc.
_____

Serial Nos. 86573076 and 87119574
_____

Barth X. deRosa of Belzer PC,
for Institute of Industrial and Systems Engineers, Inc.
Shaila E. Lewis, Trademark Examining Attorney, Law Office 105,
Laurie Kaufman, Managing Attorney (Application Ser. No. 86573076).

Matt Einstein, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney (Application Ser. No. 87119574).1
_____

Before Bergsman, Goodman, and Johnson, Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:
I. Background
The Institute of Industrial and Systems Engineers (“Applicant”) seeks registration
on the Principal Register of the marks INSTITUTE OF INDUSTRIAL AND
SYSTEMS ENGINEERS, in standard characters (“Applicant’s Word Mark”)2 and

1 At the hearing, Examining Attorney Matt Einstein presented the arguments on behalf of
the United States Patent and Trademark Office (“USPTO” or “Office”).
2 Application Serial No. 86573076, filed on March 26, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
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INSTITUTE OF INDUSTRIAL & SYSTEMS ENGINEERS (and Globe Design)
(“Applicant’s Composite Design Mark”),3 as shown below,

both for the following goods and services:
Publications, namely, magazines, brochures, pamphlets
and course materials in the field of industrial engineering,
ergonomics and human factor design, in International
Class 16;
Association services, namely, promoting the interest of
members involved in the field of industrial engineering,
ergonomics and human factor design; organizing business
competitions; arranging and conducting exhibitions for
business purposes in the field of industrial engineering,

use the mark in commerce. Applicant initially identified itself as the “Institute of Industrial
Engineers.” On Mar. 9, 2016, Applicant recorded a change of name from the “Institute of
Industrial Engineers, Inc.” to the “Institute of Industrial and Systems Engineers, Inc.” The
USPTO recorded the change of name at reel 5748, frame 0283. During prosecution, Applicant
filed an amendment to allege use, claiming Apr. 1, 2016 as the date of first use and use in
commerce. See discussion infra Section I.A.

Citations to the examination record refer to the Trademark Office’s online Trademark Status
and Document Retrieval (TSDR) system, by page number. References to the briefs, motions,
and orders on appeal are to the Board’s TTABVUE docket system.

3 Application Serial No. 87119574, filed on Aug. 1, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), based on Applicant’s use of the mark and claiming a date of first use
and first use in commerce of Apr. 1, 2016. Applicant describes the mark as follows: “The mark
consists of The [sic] words ‘INSTITUTE OF INDUSTRIAL & SYSTEMS ENGINEERS’
appear to the right of a globe-like design.” Application, TSDR at p. 1.

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ergonomics and human factor design, in International
Class 35;
Educational services, namely, organizing and conducting
student competitions in the field of industrial engineering,
ergonomics and human factor design; arranging and
conducting educational conferences, educational programs
and educational exhibitions in the field of industrial
engineering, ergonomics and human factor design; training
services, namely, developing and facilitating in-company
leadership and executive development programs; executive
coaching services; online journals, namely, blogs in the
field of ergonomics and human factor design, in
International Class 41; and
Consulting services in the field of industrial engineering;
consulting services in the field of ergonomics and human
factor design, namely, designing workplace facilities and
equipment to optimize efficiency and safety, in
International Class 42.
A. Application Serial Number 86573076 (the ’076 Application)
Trademark Examining Attorney Shaila E. Lewis refused to register Applicant’s
Word Mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the word “institute,” and the phrase “of industrial and systems
engineers,” are merely descriptive of the identified goods and services.4 Examining
Attorney Lewis also advised Applicant that registration on the Supplemental
Register is not available for marks filed under Section 1(b) of the Trademark Act.5

4 Jun. 26, 2015 Office Action, TSDR p. 1; Jan. 24, 2016 Office Action (Final Refusal), TSDR
p. 1.
5 Id.
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Over four months later, Applicant filed an Amendment to Allege Use for each class
of goods and services.6 On the same day, Applicant appealed and requested
reconsideration. In the Request for Reconsideration, Applicant claimed that the mark
INSTITUTE OF INDUSTRIAL AND SYSTEMS ENGINEERS acquired
distinctiveness and should be registered under the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f).7 After Examining Attorney Lewis denied
Applicant’s Request for Reconsideration,8 the appeal resumed. We then suspended
the appeal9 pending the final determination in examination of Application Serial No.
87119574, Applicant’s Composite Design Mark.
B. Application Serial Number 87119574 (the ’574 Application)
Trademark Examining Attorney Einstein refused to register Applicant’s
Composite Design Mark under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C.
§§ 1051, 1052, and 1127, for the goods claimed in International Class 16 on the
ground that the listed products are not “goods in trade.”10 He also required a
disclaimer of the words “institute of industrial & systems engineers” because they are
merely descriptive of the goods and services claimed under Applicant’s Composite
Design Mark, pursuant to Section 2(e)(1) of the Trademark Act.11

6 Amendment to Allege Use, Jul.14, 2016, TSDR p. 1.
7 Request for Reconsideration after Final Action, Jul. 14, 2016, TSDR p. 1.
8 Aug. 17, 2016 Office Action, TSDR p. 1; Mar. 7, 2017 Final Office Action, TSDR p. 1.
9 Suspension, 9 TTABVUE 1.
10 Nov. 14, 2016 Office Action, TSDR p. 1.
11 Id.
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In its response to the Office Action, Applicant asserted that a disclaimer is not
required, the Class 16 specimen does show the mark on “goods in trade,” and
alternatively, that the words “institute of industrial & systems engineers” have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f).12 Examining Attorney Einstein continued and maintained the specimen
refusal and disclaimer requirement, and did not accept the Section 2(f) claim in
part.13
C. Consolidation of the Ex Parte Appeals
After the refusals for the ’574 Application were made final, Applicant appealed
and requested reconsideration. When the Examining Attorney denied the request for
reconsideration,14 Applicant requested that the USPTO consolidate the ’076 and ’574
appeals.15 We granted Applicant’s request. After five months of extensions of time
and briefing, Examining Attorney Lewis requested that the Board suspend the case
and remand it to address the issue of Applicant’s claim of acquired distinctiveness
under Section 2(f) of the Trademark Act.16 We restored jurisdiction of the ’076 appeal
to Examining Attorney Lewis, suspended the proceedings in both appeals pending

12 May 15, 2017 Response to Office Action, TSDR p. 1.
13 Jun. 5, 2017 Office Action, TSDR p. 1; Dec. 27, 2017 Final Office Action, TSDR p. 1.
14 ’574 Jul. 18, 2018 Request for Reconsideration Denied, TSDR p. 1.
15 ’076 Notice to Reactivate and Consolidate Ex Parte Appeal, 10 TTABVUE.
16 ’076 Motion to Remand, 16 TTABVUE.
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completion of her review in the ’076 appeal, and allowed Applicant to file a
supplemental brief addressing the new issues.17
After Examining Attorney Lewis continued the 2(e)(1) refusal and outlined her
reasons for refusing to accept the 2(f) claim for the Word Mark, Applicant responded
to the Office Action. Nevertheless, Examining Attorney Lewis continued to refuse
registration.18
Thereafter, on October 31, 2019, the Board resumed proceedings in the
consolidated appeals. The consolidated appeal has been fully briefed, and oral
argument was held on November 10, 2020. For the reasons discussed below, we affirm
the Class 16 specimen refusal and the disclaimer requirement for the Composite
Design Mark, as well as the mere descriptiveness refusal of the Word Mark and
Composite Design Mark. However, we reverse the refusals based on the sufficiency
of Applicant’s claims of acquired distinctiveness for both marks.
II. We Affirm the Specimen Refusal for Class 16 of the ’574
Application.
Section 45 of the Trademark Act, 15 U.S.C. §1127, defines a “trademark” as a
“word, name, symbol, or device, or any combination thereof” that is used or intended
to be used in commerce “to identify and distinguish his or her goods” (emphasis
added). Before an applicant can establish rights in a term as a trademark, the subject
matter to which the term is applied must be “goods in trade.” Incidental items that

17 ’076 Board Order, 19 TTABVUE.
18 ’076 Sept. 26, 2019 Request for Reconsideration After Final Action Denied, TSDR p. 1.
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an applicant uses in conducting its business (such as letterhead, invoices, reports,
boxes, and business forms), as opposed to items sold or transported in commerce for
use by others, are not “goods in trade.” See In re Shareholders Data Corp., 495 F.2d
1360, 181 USPQ 722, 722 (CCPA 1974) (finding that reports are not goods in trade
where applicant is not engaged in the sale of reports, but instead engaged solely in
furnishing financial reporting services, and where reports are merely a conduit
through which services are rendered); In re Thomas White Int’l, Ltd., 106 USPQ2d
1158, 1162-63 (TTAB 2013) (finding that applicant’s annual report does not constitute
a “good in trade,” but rather “is a common and necessary adjunct to the rendering of
applicant’s investment management and research services, that is, it is one of the
means through which it provides investment services”).
The determination of whether an applicant ’s identified goods comprise
independent goods in trade, or are merely incidental to the applicant’s services, is a
factual determination made on a case-by-case basis. In re Thomas White Int’l, Ltd.,
106 USPQ2d at 1161 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 103
USPQ2d 1672, 1676 (Fed. Cir. 2012)). Factors to consider include “whether
[applicant’s good]: (1) is simply the conduit or necessary tool useful only to obtain
applicant’s services; (2) is so inextricably tied to and associated with the service as to
have no viable existence apart therefrom; and (3) is neither sold separately from nor
has any independent value apart from the services.” Id. at 1162 (citing Lens.com, 103
USPQ2d at 1676). None of these factors is dispositive. Lens.com, 103 USPQ2d at
1676.
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An application based on Trademark Act Section 1(a) must include a specimen
showing the applied-for mark in use in commerce for each class of goods or services
identified in the application or amendment to allege use. 15 U.S.C. § 1051(a)(1); 37
C.F.R. §§ 2.34(a)(1)(iv), 2.56(a); TRADEMARK MANUAL OF EXAMINING PROCEDURE §§
904, 904.07(a) (TMEP) (Oct. 2018). If the specimen, identification of goods, or other
evidence in the record indicate that the applicant uses the proposed mark only on
items incidental to conducting its own business, as opposed to items intended to be
used by others, the examining attorney must refuse registration on the Principal
Register under §§1, 2, and 45 of the Trademark Act, on the ground that the proposed
mark is not used on “goods in trade.” TMEP 1202.06(a).
Examining Attorney Einstein refused registration of Applicant’s Composite
Design Application because the specimen Applicant submitted for Class 16, a
brochure, is an advertisement for Applicant’s services, or “incidental,” and does not
show the mark used on “goods in trade.”19 Applicant contends that its specimen for
Class 16 is not incidental to Applicant’s business inasmuch as “the brochures have
tremendous value to the organization—they unlock the door for a new member of the
organization and are routinely transported in commerce,” and therefore, function as
goods in trade.20
We reproduce Applicant’s specimen below.21

19 ’574 Examining Attorney’s Appeal Brief, Jan. 4, 2019, 12 TTABVUE 9; ’574 Examining
Attorney’s Appeal Brief, Jul. 24, 2020, 20 TTABVUE 9.
20 Applicant’s Appeal Brief, 10 TTABVUE 26.
21 Jul. 28, 2016 Specimen, TSDR pp. 1-2.
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As noted above, Applicant claims the following goods in Class 16: “Publications,
namely, magazines, brochures, pamphlets and course materials in the field of
industrial engineering, ergonomics and human factor design.” Keeping the factors
discussed above in mind, as well as the definition of “brochure,”22 we find that the
specimen that Applicant proffered for Class 16 does not rise to the level of “goods in

22 We take judicial notice of the noun “brochure,” defined as a “pamphlet, booklet; especially
one containing descriptive or advertising material.” MERRIAM-WEBSTER DICTIONARY (2020)
(https://www.merriam-webster.com/dictionary/brochure) (last accessed Nov. 16, 2020). The
Board may take judicial notice of dictionary definitions, including online dictionaries that
exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016);
Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re
Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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trade,” regardless of the subjective value that Applicant may ascribe to the brochure.
First, the brochure is simply the conduit or necessary tool useful only to obtain
Applicant’s services in classes 35, 41, and 42; no substantive information about
industrial engineering, ergonomics, or human factor design is offered through the
brochure. Second, the brochure is so inextricably tied to and associated with
Applicant’s services in classes 35, 41, and 42 as to have no viable existence apart from
those services. Third, the brochure does not have any independent value apart from
the claimed services in classes 35, 41, and 42. Consequently, we affirm the refusal to
register the Composite Design Mark in Class 16.
III. We Affirm the Disclaimer Requirement for the Composite
Design Mark.
A phrase (or term) must be disclaimed apart from the mark as shown if it is
deemed to be merely descriptive of the subject goods or services. See In re Grass
GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006); TMEP § 1213.08(b). A phrase is deemed
to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if
it conveys immediately an idea of an ingredient, quality, characteristic, feature,
function, purpose, or use of the goods or services. In re The Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007) (internal citation omitted)); see
also In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
Whether a 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
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significance that the phrase would have to the average purchaser of the goods or
services because of the manner of its use. In re Abcor Dev. Corp., 200 USPQ at 216.
“Whether consumers could guess what the product is from consideration of the mark
alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Indeed, “[t]he question is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question is whether someone who
knows what the goods and services are will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002)). That a phrase may have other meanings
in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979) (citing In re Hycon Mfg. Co., 169 USPQ 622, 623 (TTAB 1971) and In re
Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974)).
Examining Attorney Einstein argues that the words “institute of industrial &
systems engineers” are merely descriptive of Applicant’s goods and services. In
support, he cites the definition of the word “institute” as “an organization that does a
particular type of research or educational work,”23 and therefore, the word “institute”
immediately describes that the Applicant is an organization involved in research and
education work. In support of his argument that the phrase “industrial & systems

23 Nov. 14, 2016 Office Action, TSDR p. 2 (citing MACMILLAN DICTIONARY, http://
www.macmillandictionary.com/dictionary/American/institute_1#institute_4).
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engineers” is merely descriptive, the Examining Attorney cites Applicant’s
specimens, particularly:
 A brochure that states Applicant is “the global association of productivity
and efficiency professionals specializing in industrial and systems
engineering”;24
 Applicant’s “Mission” statement, to “[p]rovide knowledge, training,
networking opportunities and recognition to enhance the skills and
effectiveness of the industrial and systems engineering profession”;25
 Applicant’s “Vision” statement, “[t]o be the premier organization that
advances, promotes, and unites the industrial and systems engineering
profession worldwide”;26 and
 Applicant’s website, which states that “IISE, the world’s largest
professional society dedicated solely to the support of the profession, is an
international, nonprofit association that provides leadership for the
application, education, training, research and development of industrial
and systems engineering.”27
In response, Applicant asserts that the disclaimer requirement for the Composite
Design Mark should be withdrawn because the mark is inherently distinctive, it is

24 Jul. 28 2016 Application Specimen, TSDR p. 4. See also supra Part II.
25 Id.
26 Id.
27 Dec. 27, 2017 Office Action, TSDR p. 2 (citing “About IISE,” www.iise.org/
details.aspx?id=282).
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unitary, the mark has acquired distinctiveness, and because Applicant is the only
user of the words “institute of industrial & systems engineers.”28 Specifically,
Applicant argues that the wording in the Composite Design Mark is not descriptive
because “industrial & systems engineers” “describes not the products or services, but
rather the word ‘institute.’”29 Since it is the only user of the words “institute of
industrial & systems engineers,” Applicant speculates that requiring a disclaimer
would actually foster “market chaos” as well as cause confusion among Applicant’s
members and prospective members.30 Applicant then posits that registration of the
mark in its entirety and specific sequence will not hinder competition, and that a new,
“source sequence” exception, where “the sequence of terms [in a mark] designates
source when considered in its entirety,” should be created by the USPTO.31
Generally, if the individual components of a mark retain their descriptive meaning
in relation to the goods and services, the combination results in a composite mark
that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d at 1317-
18). Only where the combination of descriptive terms creates a unitary mark with a
unique, incongruous, or otherwise non-descriptive meaning in relation to the goods
and services is the combined mark registrable. See In re Colonial Stores, Inc., 394

28 See generally Applicant’s Appeal Brief, 10 TTABVUE, and Supplemental Appeal Brief for
Applicant, 15 TTABVUE.
29 Applicant’s Appeal Brief, 10 TTABVUE 14.
30 Id. at 15-16.
31 Supplemental Appeal Brief for Applicant, 15 TTABVUE 13.
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F.2d 549, 157 USPQ 382, 384 (CCPA 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161,
1162-63 (TTAB 2013). We analyze Applicant’s mark in its entirety. See In re Wisc.
Tissue Mills, 173 USPQ 319, 320 (TTAB 1972) (“The established rule is that a
composite mark must be considered in its entirety and the question then is whether
the entirety is merely descriptive.”).
We find that both the individual components and the composite result are
descriptive of Applicant’s goods and services and do not create a unique, incongruous,
or non-descriptive meaning in relation to the goods and services. Thus, even if the
composite forms a unitary mark, the mark in its entirety is merely descriptive.
Specifically, the term “institute” describes Applicant as an educational association
that provides the goods and services, and the words “industrial & systems engineers”
describe the intended group of users: industrial and systems engineers. Thus, the
words “institute of industrial & systems engineers” merely describe an organization
that serves to educate professionals in the field of industrial and systems engineering.
The combined terms, in sequence and in their entirety, do not create a unique or non-
descriptive meaning.
Furthermore, as to Applicant’s argument that the Composite Design Mark is not
descriptive because the words “industrial & systems engineers” “describe not the
goods or services, but rather the word ‘institute,’” we find that the words “industrial
& systems engineers” merely describe the provider—the “institute”—of the goods and
services as an organization consisting of industrial and systems engineers. Terms
that describe the provider of a product or service may also be merely descriptive of
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the product or service. See In re The Chamber of Commerce of the U.S., 102 USPQ2d
at 1220 (NATIONAL CHAMBER is merely descriptive of online service providing
directory information for local and state chambers of commerce, and business and
regulatory data analysis services to promote the interests of businessmen and
businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001)
(holding MAJOR LEAGUE UMPIRE as merely descriptive of clothing, face masks,
chest protectors, and shin guards).
A. Booking.com Is Inapplicable Here.
Applicant also vigorously asserts a policy argument in its briefs, contending that
the “policy justification for TMEP Section 1209.03(i) [“Considerations Relevant to
Determination of Descriptiveness or Genericness – Intended Users”] really no longer
holds water with the subsequent case development under the fair use doctrine.” 32
However, the Examining Attorneys maintain that the “[t]wo major reasons for not
protecting descriptive marks are (1) to prevent the owner of a descriptive mark from
inhibiting competition in the marketplace, and (2) to avoid the possibility of costly
infringement suits brought by the trademark or service mark owner,”33 citing In re
Abcor Dev. Corp., 200 USPQ at 217, and TMEP § 1209.

32 Supplemental Appeal Brief for Applicant, 15 TTABVUE 12; see also Applicant’s Reply Brief
and Submission of Supplemental Authority for Applicant, 37 C.F.R. Section 11.303, 21
TTABVUE 3-9; Applicant’s Reply Brief, 30 TTABVUE 4-9.
33 ’574 Examining Attorney’s Appeal Brief, Jan. 4, 2019, 12 TTABVUE 14; see also ’076
Examining Attorney’s Appeal Brief, Apr. 21, 2020, 29 TTABVUE 12.
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Arguing against the Office’s policy justification for not protecting descriptive
marks, Applicant requests that the Board fully reconsider this consolidated appeal
within the context of U.S. Patent and Trademark Office et al. v. Booking.com B.V.,
591 U.S. _____, 140 S.Ct. 2298 (2020), in which the Supreme Court rejected the
Office’s “sweeping rule” that the combination of a generic word and the top level
domain “.com” is by definition generic, and thus, ineligible for federal trademark
registration. Id. at 2301. Here, Applicant argues that the Court’s rejection of the
agency’s “nearly per se” interpretation of TMEP § 1209.03(m), which pertains to
domain names, should also apply by analogy to the agency’s “total per se”
interpretation of TMEP § 1209.03(i), regarding merely descriptive terms.34 Applicant
also argues that Rule 11 of the Federal Rules of Civil Procedure eliminates the
ostensible policy justification for Section 1209.03(i), namely deterring the filing of
frivolous or groundless pleadings;35 that marks beginning with the terms “institute
of” inherently designate and distinguish source, based on relevant consumer
perception;36 and that an “exact sequence” exception should be created to prohibit a
third party from using the exact sequence of a mark to the extent there is no evidence
of anti-competitive effect, no evidence of record demonstrating third-party use of the
exact sequence, or no evidence of a third-party business need to use the exact

34 See ’574 Aug. 13, 2020 Reply Brief and Submission of Supplemental Authority for
Applicant, 37 C.F.R. Section 11.303, 21 TTABVUE 4-5.
35 15 TTABVUE 12-13; see also 21 TTABVUE 3-9; 30 TTABVUE 7-9.
36 ’574 Aug. 13, 2020 Reply Brief and Submission of Supplemental Authority for Applicant,
37 C.F.R. Section 11.303, 21 TTABVUE 5.
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sequence, since such an exception would not prohibit the use of individual elements
of a mark in a fair use manner to describe a product or service.37
We have thoroughly considered Applicant’s arguments. Applicant’s analogy to
Booking.com is misplaced.
First, the fair use doctrine is available to a defendant in a federal action who is
the alleged infringer of a registered mark. It is not applicable here, where the
registrability of a mark is at issue. See Am. Express Mktg. & Dev. Corp. v. Gilad Dev.
Corp., 94 USPQ2d 1294, 1298 (TTAB 2010) (“the ‘noncommercial use’ exception set
out in Trademark Act § 43(c)(3)(C) does not apply in a Board proceeding involving a
mark sought to be registered as a trademark or service mark, because an applicant
seeking registration is necessarily relying on a claim of use of its mark, or intended
use of its mark, in commerce.”); Truescents LLC v. Ride Skin Care, L.L.C., 81 USPQ2d
1334, 1338 (TTAB 2006) (fair use “is a defense available to a defendant in a federal
action charging infringement of a registered mark, and it has no applicability in inter
partes proceedings before the Board, which deal with the issue of registrability … .
Applicant is not using the words GENUINE and SKIN merely in a non-trademark,
descriptive manner, but instead has included those words as part of the mark it seeks
to register. This is trademark use, not non-trademark fair use … .”); TRADEMARK
TRIAL AND APPEAL BOARD OF MANUAL OF PROCEDURE § 311.02(b)(1) (TBMP) (2020).
Even though the fair use doctrine is inapplicable here, given Applicant’s
arguments about it, we are compelled to mention that the Trademark Act allows

37 Id. at 7.
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descriptive uses of terms as long as such terms are used “otherwise than as a mark”
and “fairly and in good faith” merely to describe the user’s own products.
Anticompetitive harms would be mitigated because trademark infringement requires
the trademark owner to show a likelihood of confusion.
Second, the policy rationale underlying Rule 11 has no bearing on this ex parte
appeal where Applicant, the sole party, seeks registration of its marks. Compare
TBMP § 1208 (“Treatment of Evidence”) with TBMP § 527.02 (“Motion for FED. R.
CIV . P. 11 Sanctions”); see also Emilio Pucci Int’l BV v. Sachdev, 118 USPQ2d 1383,
1387 n.8 (TTAB 2016) (standards prescribed in FED. R. CIV . P. 11 apply to all filings
in Board inter partes proceedings).
As to the remainder of Applicant’s arguments, we note that Booking.com is not
analogous here because TMEP § 1209.03(i) is not applied as a per se rule. Cf. In re
Recreational Equipment, Inc., ___ USPQ2d ___ (TTAB Nov. 20, 2020) (TMEP
1209.03(q) (source or provider of goods) does not recite per se rule of law). A proposed
mark is considered in its entirety, and consumer perception or understanding of the
proposed mark is paramount. See In re Planalytics, Inc., 70 USPQ2d 1453, 1454-56
(TTAB 2004) (GASBUYER merely descriptive of risk management services in the
field of pricing and purchasing natural gas; examining attorney submitted numerous
printouts from the Internet and from the LEXIS/NEXIS database as evidence); In re
Camel Mfg. Co., Inc., 222 USPQ 1031, 1032 (TTAB 1984) (after an evaluation of
evidence proffered by applicant and the examining attorney, MOUNTAIN CAMPER
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held merely descriptive of retail mail-order services in the field of outdoor equipment
and apparel).
Overall, we find that the words “institute of industrial & systems engineers” are
merely descriptive of the goods and services, and we affirm the disclaimer
requirement.
IV. The Word Mark INSTITUTE OF INDUSTRIAL AND SYSTEMS
ENGINEERS is Merely Descriptive.
For the same reasons articulated in Part III, above, we also find Applicant’s Word
Mark, INSTITUTE OF INDUSTRIAL AND SYSTEMS ENGINEERS,38 to be merely
descriptive under Section 2(e)(1) of the Trademark Act.
V. Applicant’s Marks Have Acquired Distinctiveness.
Finally, Applicant asserts in the alternative that both marks have acquired
distinctiveness pursuant to Section 2(f) of the Trademark Act. In support of its 2(f)
claim, Applicant submitted an affidavit from its Chief Operating Officer (“COO”), Ms.
Donna Calvert.39 In her Declaration, Ms. Calvert testified, in relevant part, that
Applicant:

38 The word “and,” as it is used in the Word Mark, is equivalent to the ampersand (“&”) used
in the Composite Design Mark. See ’574 Dec. 27, 2017 Office Action, TSDR pp. 4-14 (citing
THE MERRIAM-WEBSTER DICTIONARY, https://www.merriam-webster.com/dictionary/
ampersand).
39 ’574 “Updated Declaration of Donna Calvert December 2017,” Dec. 5, 2017 Office Action,
TSDR pp. 2-20.
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 Has been in existence, through similarly named predecessor organizations,
since 1948;40
 Is currently “the world’s largest professional society dedicated to the support
of the industrial and systems engineering profession”;
 Has over 14,000 “members” (professionals, college students, 266 college and
university chapters, corporations, and other business entities) worldwide, 84
percent of whom live in the United States of America;
 Has 11,000 non-member customers;
 Publishes one monthly magazine, one bi-monthly magazine, and five technical
journals for its members, prospective members, and sponsors;
 Expended $95,000 between April 2016 and October 2017 on print
advertisements in its own publications, electronic advertisements on websites
such as Google and LinkedIn, and on over 550 annual mass email distributions
to all of its members, representatives of its corporate and university members,
and students; and
 Generated over 6.3 million dollars in revenue in 2016 from membership dues,
seminars, vendor exhibit registrations, and sales of advertising and
sponsorships.

40 Applicant was founded in 1948 as the “American Institute of Industrial Engineers.” Id. at
¶ 2. In 1981, Applicant changed its name to the “Institute of Industrial Engineers.” Id. In
2016, Applicant recorded, in the records of the U.S. Patent and Trademark Office, a change
of name to the “Institute of Industrial and Systems Engineers, Inc.” See supra text
accompanying note 2.
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Both examining attorneys denied Applicant’s 2(f) claims, stating that Applicant’s
evidence was insufficient because the marks have been in use fewer than five years,
Applicant’s advertising expenditures are low, Applicant has a very small membership
base, and because none of Applicant’s advertising is “look for” advertising, which
serves as a signal to purchasers that the marks are identifiers of source.41 Applicant
counters these arguments by arguing that its burden to produce 2(f) evidence should
be appropriately tailored, considering the small size of the relevant market.42
To establish that a term has acquired distinctiveness, “an applicant must show
that in the minds of the public, the primary significance of a product feature or term
is to identify the source of the product rather than the product itself.” See In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1265 (Fed. Cir. 2015)
(quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1729 (Fed. Cir. 2012)). Applicant bears the burden to establish acquired
distinctiveness. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001, 1006 (Fed. Cir. 1988). To meet this burden, an applicant may offer three basic
types of evidence:
1. A claim of ownership of one or more active prior registrations on the Principal
Register of the same mark for goods or services that are sufficiently similar

41 ’574 Examining Attorney’s Appeal Brief, 20 TTABVUE 17; ’076 Examining Attorney’s
Appeal Brief, 29 TTABVUE 14-16.
42 ’076 Applicant’s Appeal Brief, Nov. 13, 2018, 10 TTABVUE 17-25; ’076 Applicant’s Reply
Brief, May 11, 2020, 30 TTABVUE 9-12; ’574 Applicant’s Reply Brief and Submission of
Supplemental Authority for Applicant, 37 C.F.R. Section 11.303, Aug. 13, 2020, 21 TTABVUE
9-12.
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to those identified in the pending application. Trademark Rule 2.41(a)(1), 37
C.F.R. § 2.41(a)(1).

2. A verified statement that the mark has become distinctive of the applicant’s
goods or services by reason of the applicant’s substantially exclusive and
continuous use of the mark in commerce for five years before the date on which
the claim of distinctiveness is made. Trademark Rule 2.41(a)(2), 37 C.F.R.
§ 2.41(a)(2).

3. Other appropriate evidence of acquired distinctiveness. Trademark Rule
2.41(a)(3), 37 C.F.R. § 2.41(a)(3).
The applicant may submit one or any combination of these types of evidence.
Depending on the nature of the mark and the facts in the record, the examining
attorney may determine that a claim of ownership of a prior registration(s) or a claim
of five years of substantially exclusive and continuous use in commerce is insufficient
to establish a prima facie case of acquired distinctiveness. In such a case, the
applicant may then submit additional other evidence of acquired distinctiveness.
In this case, our analysis of acquired distinctiveness and ultimate determination
of it is based on all of the evidence considered as a whole:
[T]he considerations to be assessed in determining whether
a mark has acquired secondary meaning can be described
by the following six factors: (1) association of the [mark]
with a particular source by actual purchasers (typically
measured by customer surveys); (2) length, degree, and
exclusivity of use; (3) amount and manner of advertising;
(4) amount of sales and number of customers; (5)
intentional copying; and (6) unsolicited media coverage of
the product embodying the mark.
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In re SnoWizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting Converse, Inc.
v. Int’l Trade Comm’n, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018)). “All
six factors are to be weighed together in determining the existence of secondary
meaning.” Converse, 128 USPQ2d at 1546.
A. Degree of Descriptiveness
The initial question before us in our analysis of whether INSTITUTE OF
INDUSTRIAL AND SYSTEMS ENGINEERS has acquired distinctiveness is the
degree of descriptiveness of that term as used in connection with Applicant’s services.
See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed.
Cir. 2018) (“[T]he Board must make an express finding regarding the degree of the
mark’s descriptiveness on the scale ranging from generic to merely descriptive, and
it must explain how its assessment of the evidentiary record reflects that finding.”);
Nazon v. Ghiorse, 119 USPQ2d1178, 1186 (TTAB 2016) (“In determining whether or
not a term has acquired distinctiveness as a trademark, we must consider the degree
of descriptiveness of the term. ‘The greater the degree of descriptiveness the term
has, the heavier the burden to prove it has attained secondary meaning.’”) (quoting
Yamaha Int’l Corp., 6 USPQ2d at 1008); In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (Fed. Cir. 2005) (“[A]pplicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term
requires more evidence of secondary meaning.”) (citing In re Bongrain Int’l (Am.)
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 n.4 (Fed. Cir. 1990) (quotation omitted)).
As the Board has explained:
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[T]he greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive terms,
for example, are less likely to be perceived as trademarks
and more likely to be useful to competing sellers than are
less descriptive terms. More substantial evidence of
acquired distinctiveness thus will ordinarily be required to
establish that such terms truly function as source-
indicators.
In re Greenliant Sys., Ltd., 97 USPQ2d 1078, 1085 (TTAB 2010) (internal citations
omitted); see also La. Fish Fry Prods., 116 USPQ2d at 1265 (Board has discretion not
to accept an applicant’s allegation of five years of substantially exclusive and
continuous use as prima facie evidence of acquired distinctiveness when the proposed
mark is “highly descriptive”); In re The Boston Beer Co. L.P., 198 F.3d 1370, 53
USPQ2d 1056, 1058 (Fed. Cir. 1999) (“[C]onsidering the highly descriptive nature of
the proposed mark, [Applicant] has not met its burden to show that the proposed
mark has acquired secondary meaning.”).
Based on the evidence discussed above in connection with the descriptiveness
refusal, we find that each of the terms comprising the subject matter that Applicant
seeks to register, INSTITUTE OF INDUSTRIAL AND SYSTEMS ENGINEERS, is
highly descriptive of the services identified in the application. Moreover, when
combined, the record also shows that the composite proposed mark INSTITUTE OF
INDUSTRIAL AND SYSTEMS ENGINEERS is highly descriptive of those services.
See, e.g., Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d
1370, 1374 (Fed. Cir. 2018) (CORN THINS and RICE THINS are highly descriptive);
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La. Fish Fry Prods., Ltd., 116 USPQ2d at 1265; Apollo Med. Extrusion Techs., Inc.,
123 USPQ2d 1844, 1851 (TTAB 2017) (MEDICAL EXTRUSION TECHNOLOGIES
is highly descriptive of “polyurethanes in the form of sheets, films, pellets, granules,
and tubes for use in the manufacture of medical devices, medical diagnostic devices,
artificial vascular grafts, stents, pacemaker leads, artificial heart pump diaphragms,
catheters, drug delivery devices, orthopedic and spinal implants, blood glucose
monitors, and blood gas analyzers”); In re Positec Grp. Ltd., 108 USPQ2d at 1173
(holding SUPERJAWS merely descriptive for machine tools, hand tools, and
workbench accessories). Clearly, no thought or imagination is required to
immediately understand that activities relating to industrial and systems
engineering rendered under the mark INSTITUTE OF INDUSTRIAL AND
SYSTEMS ENGINEERS are just that: activities related or referring to industrial and
systems engineers.
Accordingly, the wording INSTITUTE OF INDUSTRIAL AND SYSTEMS
ENGINEERS is highly descriptive of Applicant’s services under Section 2(e)(1) of the
Trademark Act.
B. Acquired Distinctiveness
Applicant vigorously asserts that the Board, when determining whether the
marks have achieved acquired distinctiveness, should consider Applicant’s niche and
the size of the relevant market. In order to properly assess Applicant’s claims of
acquired distinctiveness, we must evaluate the proffered evidence. Applicant, which
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does not have five years of use of either mark, proffered only one declaration43—from
its COO—which purported to address Applicant’s length, degree, and exclusivity of
use of the marks; the amount and manner of advertising using the marks; and
Applicant’s amount of sales and number of customers. While we are well aware that
it is routine to proffer myriad boilerplate declarations to support a claim of acquired
distinctiveness, at the same time, quantity should not trump quality. Here, however,
the lack of a single declaration from a member or non-member customer is a
departure from accepted practice that has not gone unnoticed. During the hearing,
Applicant asserted that declarations from its members, non-member customers, or
relevant consumers were not needed, because 65.4 percent44 of Applicant’s members
voted in favor of a change to Applicant’s current name, the “Institute of Industrial
and Systems Engineers,” indicating that the members are aware that Applicant is
the source of its claimed goods and services. We are only mildly persuaded by this
argument. Some declarations from Applicant’s members and non-member customers,
as well as from relevant consumers, would have been more persuasive evidence in
support of Applicant’s claims of acquired distinctiveness, rather than none at all.

43 The Examining Attorneys focus on the lack of “look for” advertising, but we do not consider
the lack of “look for” advertising to be relevant here, considering Applicant’s marks and the
goods and services offered through them.
44 Applicant stated that 65.4 percent of its members worldwide voted in favor of the name
change (9,156 members worldwide), but Applicant did not provide the breakout percentage
(or total number) of votes in favor of the name change from members residing in the United
States. Here, only the United States data is relevant, not overall worldwide data. Using the
data provided by Applicant, we estimate that out of the 9,156 member votes cast in favor of
the name change worldwide, 7,691 of those votes were cast by Applicant’s members residing
in the United States.
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Although Applicant only proffered the declaration of its COO, we still find,
through other evidence, that Applicant has satisfied its burden of proving acquired
distinctiveness of both the Word Mark and Composite Design Mark. Applicant, which
has been in existence since 1948 through similarly named predecessor organizations,
is the world’s largest professional society dedicated to the support of the industrial
and systems engineering profession,45 with 14,000 members worldwide, 84 percent
(approximately 11,760) of whom live in the United States. Members include Fortune
100 sponsors such as Accenture, Amazon.com, Boeing, FedEx, Northrop Grumman,
and UPS; and universities such as Arizona, Arizona State, California-Berkeley,
Florida, Georgia Tech, Illinois, Iowa, Michigan, Minnesota, Missouri, North Carolina
A & T, North Carolina State, Northeastern, Northwestern, Ohio State, Oklahoma,
Penn State, Texas, Texas A & M, and Virginia Tech.46 Applicant also has chapters at
many of the aforementioned universities, as well as at Alabama, Auburn, Boston
University, Clemson, Florida A & M, Hofstra, Louisiana State, Morgan State,
Purdue, Rutgers, SUNY-Binghamton, West Virginia, Wisconsin, and Wright State,
to name a few.47 Applicant has another 11,000 non-member customers with whom it
does business through the marks. Furthermore, Applicant generated over 6.3 million

45 In his brief and during the hearing, Examining Attorney Einstein noted that Applicant
failed to proffer any evidence of the universe, or total number, of industrial and systems
engineers in the United States, making it impossible to determine consumer impression.
While we acknowledge that there is no record evidence of the universe of industrial and
systems engineers, we are basing our decision here on other record evidence that is
persuasive.
46 ’574 “Updated Declaration of Donna Calvert December 2017,” Dec. 5, 2017 Office Action,
TSDR pp. 8-9.
47 Id. at TSDR pp. 11-17.
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dollars in revenue in 2016, not an insignificant amount. From this evidence, we
conclude that a sizeable number of relevant consumers are aware of Applicant as an
identifier of source for its goods and services. For these reasons, we find that
Applicant’s Word Mark and Composite Design Mark have acquired distinctiveness,
and we reverse the refusals to register the marks on that basis.
V. Conclusion
Although INSTITUTE OF INDUSTRIAL AND SYSTEMS ENGINEERS is merely
descriptive, we accept Applicant’s claim of acquired distinctiveness for the Word
Mark. Likewise, although the wording “institute of industrial & systems engineers”
in the Composite Design Mark is merely descriptive, we accept Applicant’s claim in
part of acquired distinctiveness for the Composite Design Mark.
Decision: In Application Serial Number 86573076, we affirm the refusal to
register as inherently distinctive the Word Mark, INSTITUTE OF INDUSTRIAL
AND SYSTEMS ENGINEERS, on the ground that it is merely descriptive, but
reverse the finding of an insufficient showing of acquired distinctiveness under
Section 2(f) of the Trademark Act.
In Application Serial Number 87119574, we affirm the refusal to register the
Composite Design Mark, INSTITUTE OF INDUSTRIAL & SYSTEMS ENGINEERS
(and Globe Design), absent a disclaimer on the ground that the wording is merely
descriptive, but reverse the finding of an insufficient showing of acquired
distinctiveness in part as to International Classes 35, 41, and 42. We affirm the
refusal to register the Composite Design Mark in International Class 16.
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Application Serial No. 86573076 will proceed to publication in International
Classes 16, 35, 41, and 42. Application Serial No. 87119574 will proceed to publication
in International Classes 35, 41, and 42.