Jonathan Davey

Trademark Trial and Appeal Board

Nov 13, 2007

No. 78752384 (T.T.A.B. Nov. 13, 2007)

Mailed: 11/13/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jonathan Davey
________

Serial No. 78/752384
_______

Patricia S. Kramer, Patricia A. Walker and Ralph E. Jocke
of Walker & Jocke for Jonathan Davey.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Jonathan Davey filed an application to register the
mark SAFE HARBOR for “accounting services.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, if used
in connection with applicant’s services, would be merely
descriptive thereof.

1 Application Serial No. 78752384, filed November 11, 2005,
alleging a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78752384
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the term “safe
harbor” describes accounting services utilizing safe harbor
techniques to reduce tax liabilities. According to the
examining attorney, “safe harbor” is a general accounting
method that uses simplistic accounting techniques, rather
than the complex techniques prescribed by tax codes, to
calculate tax consequences and reduce tax liabilities. In
support of the refusal the examining attorney submitted
several definitions of “safe harbor” from a variety of
sources on the Internet.
Applicant contends that the mark sought to be
registered does not immediately describe the nature of
applicant’s services, but that it requires some
imagination, thought, or perception to reach a conclusion
about the services. The term “safe harbor” is used in
everyday life simply to mean “a place of protection.”
Thus, applicant argues, the term is just suggestive,
conveying the idea that “your financial information is safe
with us,” “we will properly handle your accounting
matters,” or “we will not overcharge you for our accounting
services.” Applicant responds to the examining attorney’s
Internet evidence by contending that it “should be given de
Ser No. 78752384
3
minimis weight and treated as possibly suspect.” Applicant
reasons that Internet articles must be understood in their
context, and that use of “safe harbor” in them does not
establish that the consuming public is familiar with the
term or is applying to such term the same meaning found in
the articles. Applicant is critical, in particular, of the
Wikipedia evidence.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(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, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
Ser No. 78752384
4
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. The term need not describe all of the goods
or services set forth in the identification, as long as it
merely describes one of them. See In re Sterotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
That a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). It is settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
The term “safe harbor” is defined in the context of
accounting as follows:
SAFE HARBOR RULE: tax provision
enacted as part of the Economic Tax
Recovery Act of 1981 to guarantee
sale/leaseback treatment to certain
Ser No. 78752384
5
transactions if specific requirements
are met. The purpose of this provision
was to make it easier for loss
companies to “sell” their tax benefits
accruing on new asset purchases by
entering into sale/leaseback
transactions with profitable companies.
The intent was to generate an immediate
cash flow for such loss companies,
rather than deferring the benefits
through carryover provisions.

Dictionary of Accounting Terms (4th ed. 2005).
Other sources define the term “safe harbor” as
follows:
In taxation, guidelines provided by the
IRS for certain transactions,
indicating specific parameters a
taxpayer can observe to ensure
favorable tax treatment or to avoid an
unfavorable one.
(Dictionary of Business Terms (3d ed.
2000))

In accounting, the term safe harbor may
refer to the method by which
corporations would rather (typically)
incur tax consequences than follow the
precise requirements of their
respective tax codes.
(www.answers.com)

An accounting method that avoids legal
or tax regulations and allows for a
simpler method (usually) of determining
a tax consequence than those methods
described by the precise language of
the tax code. Here’s an example of an
accounting safe harbor: a firm is
losing money and therefore cannot claim
an investment credit, so it transfers
this claim to a company that is
profitable and can therefore claim the
credit. Then the profitable company
Ser No. 78752384
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leases the asset back to the
unprofitable company and passes on the
tax savings.
(www.investopedia.com)

Tax regulations that allow a (usually)
simpler method of determining a tax
consequence than is available following
the precise language of the Code or
regulations. An example is the
simplified method for determining the
taxable portion of pension
distributions.
(www.bookkeeperlist.com “Accounting
for Everything”)

SAFE HARBOR METHOD
The [IRS] will not challenge the use of
this safe harbor method of accounting
by a taxpayer within the scope of this
revenue procedure provided the taxpayer
follows all of the requirements of this
section 5 and, if the taxpayer is
changing from another method to the
safe harbor method, the provisions of
section 6 of this revenue procedure
regarding changes in method of
accounting. Under the safe harbor
method, the taxpayer must amortize
creative property costs properly
written off by the taxpayer under SOP
00-2 ratably over an amortization
period of 15 years beginning on the
first day of the second half of the
taxable year in which the taxpayer
properly writes off the costs under
SOP.
(IRS Bulletin: 2004-24, June 14, 2004)

Revenue Procedure 2004-36 provides a
safe harbor method of accounting under
which a taxpayer within the scope of
this revenue procedure may amortize
creative property costs (as defined)
ratably over a 15-year period. This
revenue procedure also provides
procedures for taxpayers to obtain the
Ser No. 78752384
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automatic consent of the Commissioner
of Internal Revenue to change to the
safe harbor method of accounting
provided in this revenue procedure.
(IRS Guidance Issued (unknown date))

Further, Wikipedia defines the term “safe harbor” within
the “accounting” field as follows; “In accounting, the
term safe harbor may refer to the method by which
corporations would rather (typically) incur tax
consequences than follow the precise requirements of their
respective codes.”
We find the record establishes that the term “safe
harbor” describes, among other things, a method of
accounting relating to tax liability. We must make our
determination on the issue of mere descriptiveness based on
the identification of services set forth in the
application. Cf. Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Here, applicant has broadly identified his services as
“accounting services.” Thus, we must presume that the
identification encompasses all types and methods of
accounting services, including the safe harbor method of
accounting. The term “safe harbor” immediately describes,
without conjecture or speculation, a significant
characteristic or feature of the services, namely that
applicant’s accounting services utilize the safe harbor
Ser No. 78752384
8
method of accounting to reduce tax liability. That the
term “safe harbor” has a meaning in everyday life (as “a
place of protection”) is immaterial in view of its use as a
term of art in the accounting field.
Applicant’s criticisms of the Internet evidence
(including the Wikipedia excerpt) submitted by the
examining attorney are not persuasive. The Board generally
takes a somewhat more permissive stance with respect to the
admissibility and probative value of evidence in an ex
parte proceeding. See TBMP §1208 (2d ed. rev. 2004).
Internet evidence is generally admissible and may be
considered for purposes of evaluating a trademark. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
(Fed. Cir. 2007). See also TMEP §710.01(b) (5th ed. 2007)
[“Articles downloaded from the Internet are admissible as
evidence of information available to the general public,
and of the way in which a term is being used by the public.
However the weight given to this evidence must be carefully
evaluated because the source is often unknown.”]. In the
present case, the term “safe harbor” has been exposed to
the public, and we have no reason to question the
reliability of the Internet definitions, especially given
the use of the term by the Internal Revenue Service. See
TBMP §1208.03 (2d ed. rev. 2004) [“Material obtained
Ser No. 78752384
9
through the Internet or from websites is acceptable as
evidence in ex parte proceedings.”].
Insofar as Wikipedia is concerned, the Board recently
addressed the admissibility and probative value of this
resource:
[T]he Board will consider evidence
taken from Wikipedia so long as the
non-offering party has an opportunity
to rebut the evidence by submitting
other evidence that may call into
question the accuracy of the particular
Wikipedia information. Our
consideration of the Wikipedia evidence
is with the recognition of the
limitations inherent with Wikipedia
(e.g., that anyone can edit it and
submit intentionally false or erroneous
information).
*****
As a collaborative online encyclopedia,
Wikipedia is a secondary source of
information or a compilation based on
other sources. As recommended by the
editors of Wikipedia, the information
in a particular article should be
corroborated. The better practice with
respect to Wikipedia evidence is to
corroborate the information with other
reliable sources, including Wikipedia’s
sources.

In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032-33
(TTAB 2007). In the present case, applicant had an
opportunity to rebut the Wikipedia evidence, not to mention
the other Internet evidence, if he believed that the
entries of “safe harbor” in the materials were incorrect.
Applicant did not submit any contravening evidence
Ser No. 78752384
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whatsoever, and the other evidence of record corroborates
the Wikipedia evidence. The record, when viewed as a
whole, is persuasive of a finding of mere descriptiveness.
We conclude that the term SAFE HARBOR is merely
descriptive of accounting services that may utilize the
safe harbor method of accounting.
Decision: The refusal to register is affirmed.