Joseph Edward Page

Trademark Trial and Appeal Board

May 26, 1999

No. 75066101 (T.T.A.B. May. 26, 1999)

Paper No. 19
SIMMS/MD
THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE TTAB MAY 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Joseph Edward Page
________
Serial No. 75/066,101
_______
Joseph Page, pro se.
Sirina Tsai, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Simms, Cissel and Hohein, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Joseph Edward Page (applicant) has appealed from the
final refusal of the Trademark Examining Attorney to
register the following asserted mark:
Ser No. 75/066,101
2
for “legal services, namely, patent research, prosecution
and enforcement; patent searching.”1 The Examining Attorney
has refused registration under Section 2(e)(1) of the Act,
15 USC †1052(e)(1), and on the basis of applicant’s failure
to comply with requirements for information. To aid in the
understanding of this case, a chronology of the filings in
this case is summarized below.
File History
In the first Office action, the Examining Attorney
refused registration under Section 2(e)(1), arguing that
applicant’s asserted mark 888 PATENTS was merely descriptive
of his services. In support of this argument, the Examining
Attorney attached copies of third-party registrations
wherein the term “PATENTS” had been disclaimed, and noted
that the proposed mark is in the form of a telephone number.
In response, applicant noted his agreement with the
Examining Attorney that a mark should not be considered
distinctive when it is merely a telephone number. Applicant
continued:
However, the present mark is not
associated with a telephone number in
any way. Applicant does not own or
operate any telephone or communication
means via of a [sic] telephone number
remotely similar to 888 Patents.
Applicant does operate a telephone
number 888 joe page. Indeed, the

1 Application Serial No. 75/066,101, filed March 1, 1996, based
upon applicant’s assertion of a bona fide intention to use the
mark in commerce under Section 1(b) of the Act, 15 USC §1051(b).
Ser No. 75/066,101
3
telephone number associated with 888
Patents, or 888 728-3687 has been held
unassignable by the FCC. A holding
that 888 Patents is unregisterable
because it is a phone number is
misplaced.
Applicant’s mark relates to a
fanciful connection to good luck and
wealth. The mark as used by Applicant
is highly distinctive. The Mandarin
Chinese symbol which looks similar to
the Arabic numeral “8” is a symbol
which denotes “Rich” or wealth. In
addition, “8” has become a lucky number
in other Chinese cultural meanings.
Applicant would like to enjoy
association of his business with the
good Chinese fortunes symbolized by use
of this character.
Examiner will find it particularly
instructive to note the use of the
triple “8” or “888” in some practices.
For example, a very famous restaurant
in Ontario called the “Good Luck
Chinese Restaurant” is located on 888
Dundas Street East…
Further, Examiner may wish to
investigate a very special stock mutual
fund based in the far east and relating
to that culture. The “Dragon 888” fund
is operated by Admax International
Management Ltd…Applicant has been
informed by them that it is named for
its connection to luck and wealth…
Sometimes the number 8 is
associated with luck when used singly…
There are many other occasions to
[sic] numerous to list here where
people are using both 888 and simply 8
in connection with luck. Indeed, we
can find many occurrences of the “8”
being associated with luck in the
Gaming industry…[emphasis in original]
In this response applicant also disclaims exclusive right to
use the term “PATENTS” apart from use in connection with the
numbers 888.
Ser No. 75/066,101
4
In the next Office action, the Examining Attorney
maintained the refusal under Section 2(e)(1). In addition,
the Examining Attorney required that applicant indicate if
the asserted mark will at any time in the future be used as
a telephone number. The Examining Attorney also requested
applicant to identify the source of his information that the
number 888-PATENTS is unassignable. Further, and to permit
proper examination of this application, applicant was
requested to submit samples of advertisements or promotional
materials for his services. The Examining Attorney stated
that, if such materials are not available, applicant must
describe the nature, purpose and channels of trade of the
services with which applicant has asserted a bona fide
intention to use his mark. Applicant was also requested to
submit samples, advertisements or other materials showing
how he intends to use the mark.
In response to this second Office action, applicant
argued that there is no foundation in law or authority for
the requirements of the Examining Attorney. Aside from
providing some information concerning the basis of
applicant’s assertion that the telephone number was
unassignable, in response to the request for information
concerning the nature, purpose and channels of trade of
applicant’s services, applicant referred the Examining
Attorney to statements already made of record by applicant
Ser No. 75/066,101
5
concerning the connotation of the asserted mark with respect
to good luck and wealth.
The mark is to be used for its
association with good luck and good
fortune in the marketing of patent
related legal services. The invention
business is well accompanied by
associations with good luck and good
fortune. In this way, the mark is quite
fanciful contrary to Examining
Attorney’s assertion that it is
descriptive.
Applicant’s response, 4, filed December 23, 1996. Shortly
thereafter, applicant filed a notice of appeal.2
The Examining Attorney then issued a final refusal
asserting that 888 is a prefix for toll-free telephone
numbers, and arguing that the word “PATENTS” is descriptive
of applicant’s patent-related services. The Examining
Attorney’s requirements to indicate if the mark will be
associated with a telephone number and to describe the
nature, purpose and channels of trade of applicant’s
services and to submit sample advertisements were also made
final. The Examining Attorney indicated that applicant’s
response concerning the connotation of the mark does not

2 Relying upon Trademark Rule 2.64(a) and TMEP Sections 1105.02
and 1105.03(a), the Board refused to institute an appeal because
the Examining Attorney’s requirements in the second Office action
were raised for the first time in that action. Applicant
requested reconsideration of the Board’s holding that the appeal
was premature, but the Board adhered to its decision. See TMEP
Section 1105.04(c), and TBMP Sections 1201.01 and 1201.03. The
Board explained that, for an action to be made final, all
refusals and/or requirements must have been previously made, and
that, if a new requirement is made in a subsequent action, the
Ser No. 75/066,101
6
answer the request for information concerning how applicant
intends to use the mark. With this final refusal, the
Examining Attorney attached excerpts from the Nexis database
illustrating that the prefix 888 is a part of toll-free
telephone numbers.3
Mere Descriptiveness Refusal
It is the Examining Attorney’s contention that
applicant has conceded by his disclaimer that the term
“PATENTS” is merely descriptive of his services, and that
the evidence shows that 888 is a telephone prefix carrying
no trademark significance. With respect to the latter
point, the Examining Attorney argues that the evidence of
record demonstrates that the public is accustomed to seeing
the 888 prefix used in connection with toll-free telephone
numbers. The record also demonstrates, the Examining
Attorney argues, the common practice of listing telephone
number as words or phrases in order to help people remember
the numbers. The Examining Attorney contends that many of
these mnemonic telephone numbers are constructed with seven
characters corresponding to a seven-digit telephone number.
When people see 888 PATENTS, they will
think it is a toll-free telephone number

requirement may not be made final in that action, and any appeal
therefrom is considered premature.
3 Communications Week, May 6, 1996, for example, reported:
The FCC’s implementation of the new toll-
free 888 dialing prefix as a supplement to
the nearly depleted 800 prefix…
Ser No. 75/066,101
7
written in mnemonic form. As discussed
above, 888 is [a] widely-used toll-free
telephone prefix which is often used
with characters forming a mnemonic,
easy-to-remember representation of a
seven-digit telephone number. PATENTS
is an excellent mnemonic for patent-
related services –- a single, seven-
letter word which immediately brings to
mind what the applicant does. Put
together, a toll-free telephone prefix
preceding a seven-letter word describing
the applicant’s services looks very much
like a telephone number to call for
those services…
…In the United States, where 888 is
used as a toll-free telephone prefix,
where telephone numbers have seven
digits and are often represented by
descriptive mnemonics, and where PATENTS
nicely summarizes the applicant’s
services, placing 888 in front of
PATENTS creates a mark that looks,
sounds, and gives the overall impression
of being a phone number describing the
applicant’s services.
Examining Attorney’s brief, 6, 7.
In response to this argument, applicant contends that
he does not use the asserted mark as a telephone number.
Reply brief, 2.4 Rather, applicant reiterates his
explanation that he uses the numbers 888 in connection with
“PATENTS” to indicate good luck and good fortune. Applicant
argues that his mark is a “fanciful…highly distinctive
mark,” and not a merely descriptive one. Referring to a
decision of the Court of Appeals for the Third Circuit

4 In his main brief, 3, applicant stated that he “cannot predict
the future and thus cannot make [the] promise that 888 PATENTS
will not later be used in conjunction with a phone number.”
Ser No. 75/066,101
8
(Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 23
USPQ2d 1174 (1992)),5 applicant indicates his agreement that
a mark in the form of a telephone number is not by itself a
distinctive mark. It is applicant’s position, however, that
the decision in Dranoff suggests that a phone number may be
a mark if there are other distinctive features involved.
Applicant also argues that the disclaimer of the word
“PATENTS” was not a concession that this word is merely
descriptive of his services.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.6
See, for example, 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, 217-18 (CCPA 1978). Whether a term is
merely descriptive is determined, not in the abstract, but
in relation to the goods or services for which registration

5 While remanding this case to the lower court, the Court stated
that telephone numbers that correlate to arbitrary, suggestive or
descriptive terms possessing secondary meaning may merit
trademark protection.
6 It should be remembered that applicant’s application is one
based upon an intent to use the mark, and not upon use of the
mark in commerce. Under Office practice, refusals to register
because an asserted mark does not perform the function of a
trademark or service mark are not to be made in the case of an
application filed on the basis of intention to use. Accordingly,
the question of whether applicant’s asserted mark functions as a
Ser No. 75/066,101
9
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 would have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
There is no question that the word “PATENTS” in
applicant’s mark is, by itself, merely descriptive of
applicant’s patent-related services, because it describes a
central feature of such services. Applicant’s statement
that his disclaimer of this word was not a concession of the
mere descriptiveness of this word for his patent-related
services is simply not understood or otherwise credible.
Our analysis of the mere descriptiveness of the
asserted mark does not end, of course, with a finding that a
portion thereof is merely descriptive. We must consider the
asserted mark as a whole, that is, whether the addition of
the prefix 8887 to the word PATENTS changes the merely
descriptive nature of the term PATENTS such that the mark as
a whole is inherently distinctive and, thus, registrable.
Applicant’s argument that its asserted mark is fanciful
and distinctive because the numbers 888 suggest good
fortune, good luck or wealth strains credulity. If this

service mark is not before us. See TMEP §§1105.01(a)(iii) and
(iv).
Ser No. 75/066,101
10
asserted mark is used in connection with applicant’s legal
services relating to patents, we have no doubt that
potential customers will perceive this asserted mark as a
telephone number, and not as a “fanciful…highly distinctive
mark” for applicant’s patent services. To the extent the
numbers 888 may possibly be perceived as an indication of
good fortune or wealth, and we have nothing but applicant’s
unsubstantiated arguments with respect to this statement,
then that connotation, of course, resides in any 888-
prefixed telephone number, and not exclusively with
applicant’s asserted mark.
We believe, therefore, that applicant’s asserted mark
will be perceived as what has been referred to as an
alphanumeric telephone number—-a number formed by both
numbers and letters. The commercial use of such
alphanumeric characters, sometimes referred to as “vanity”
telephone numbers, at least in the context of intellectual
property law, is relatively recent. In a state court
decision, Cytanovich Reading Center v. The Reading Game, 225
USPQ 588 (Cal. Ct. App. 1984), the court stated that it had
found no prior cases holding that a particular telephone
number either could or could not constitute a trademark or
service mark. In the intervening years there have been a

7 Applicant has admitted that it uses this prefix already in
connection with the telephone number 888 JOE PAGE.
Ser No. 75/066,101
11
relatively small number of cases dealing with the
protectibility of telephone numbers.
The cases that have been cited by applicant and the
Examining Attorney, and the additional cases which the Board
has found, are of relatively little help in our
determination of whether the asserted mark is merely
descriptive of applicant’s legal services. This is because
the various court cases involved, for the most part, issues
of unfair competition and likelihood of confusion. See
Dial-a-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11
USPQ2d 1644 (2d Cir. 1989)(defendant’s use of confusingly
similar phone number enjoined); Dranoff, supra (remanded the
case, and, disagreeing with the Second Circuit’s position
that telephone numbers which correlate to generic terms may
be protectible as marks, stated that, if such were the case,
then “the first firm in a given market to obtain such a
telephone number would, merely by winning the race to the
telephone company, gain an unfair advantage over its
competitors”); Bell v. Kidan, 836 F.Supp. 125, 28 USPQ2d
1077 (S.D.N.Y. 1993)(motion for preliminary injunction
denied in case involving registered mark CALL-LAW and 1-800-
LAW-CALL); Kelley Blue Book v. Car-Smarts Inc., 802 F.Supp.
278, 24 USPQ2d 1481 (C.D. Cal. 1992)(“1-800-BLU-BOOK” likely
to cause confusion with “Kelley Blue Book”, where “Blue
Book” had acquired a secondary meaning); and Murrin v. Midco
Ser No. 75/066,101
12
Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D.
Minn. 1989)(defendant enjoined from using a phone number
outside the New York City metropolitan area confusingly
similar to plaintiff’s unchallenged registered mark “DIAL
L-A-W-Y-E-R-S”).
However, some cases have explicitly dealt with the
issue of descriptiveness of alphanumeric telephone numbers.
For example, in Express Mortgage Brokers Inc. v Simpson
Mortgage Inc., 31 USPQ2d 1371 (E.D. Mich. 1994), the Court
found that the telephone number “369-CASH” for mortgage-
related services was descriptive but had acquired a
secondary meaning. And more recently, in 800 Spirits Inc.
v. Liquor By Wire, Inc., 14 F.Supp.2d 675 (D.N.J. 1998),
involving defendant’s use of the phone number “1-800-
SPIRITED”, the Court commented, at 680, 681:
…[I]f a business were permitted to preclude
the use of a toll-free telephone number that
corresponds to a generic term simply by devel-
oping a service mark of “800,” “888,” or “877”
followed by the term, competitors would be
denied the opportunity to take advantage of
this often effective marketing technique.
It has become increasingly popular to
advertise one’s services through toll-free
mnemonic telephone numbers… The competitive
advantages derived from such "vanity" numbers are
apparent. Because they are easily recognizable
and memorable, they readily communicate the nature
of the services offered. Companies that generate
a significant portion of their business through
telephone orders frequently advertise these
numbers as their primary identification mark.
There are often few available toll-free numbers
that correlate to the specific generic term most
descriptive of a firm's services. Competition
Ser No. 75/066,101
13
for these limited toll-free numbers is extremely
intense; companies often pay large sums for the
right to use them… To permit a company to
foreclose usage of a toll-free mnemonic number
that spells a generic term would give that company
an unfair competitive advantage in the market and
deprive consumers of the intrinsic utilitarian
value that such numbers offer…
…Simply put, within the circumstance of
telephone number designations, the number 800 is a
functional term that represents a toll-free area
code. A service mark that uses “800” with a
generic term cannot as a matter of law preclude
use of substantially similar telephone
numbers…[Footnotes and authority deleted.]
The Trademark Manual of Examining Procedure sets forth
the following general guidelines with respect to the
registrability of telephone numbers (TMEP §1209.01(b)(12)):
If an applicant applies to register a
designation that consists of a merely
descriptive or generic term with numerals
in the form of a telephone number, for
example, 800, 888 or 900 followed by a
word, registration should be refused
under †2(e)(1). The fact that a
designation is in the form of a telephone
number is insufficient, by itself, to
render it distinctive. See Dranoff-
Perlstein Associates v. Sklar, 23 USPQ2d
1174 (3d Cir. 1992). But see Dial-A-
Mattress Franchise Corp. v. Page, 880
F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989);
Murrin v. Midco Communications Inc., 726
F. Supp. 1195, 13 USPQ2d 1815 (D. Minn.
1989). If the relevant term is merely
descriptive, but not generic, the mark
may be registered on the Principal
Register with a proper showing of
acquired distinctiveness under †2(f) or
on the Supplemental Register. Of course,
the designation must also be used in the
manner of a mark. If the relevant term
is generic, the designation is
unregisterable on either the Principal or
the Supplemental Register.
Ser No. 75/066,101
14
In our opinion, the numerals in applicant’s asserted
mark are not sufficient to change the perception of the term
PATENTS as being merely descriptive, and, therefore, we find
that the mark as a whole is merely descriptive of
applicant’s services. That is to say, the 888 prefix in the
mark does not have any source-identifying significance.
Rather, in our view, the numbers will be readily perceived
as nothing more than the prefix used in a toll-free
telephone number, without trademark (or service mark)
significance. Therefore, the mark as a whole merely
describes the patent services available from applicant.
Failure to Comply with Requirements
The Examining Attorney argues that applicant’s failure
to comply with her three requests for information
constitutes grounds for refusal to register. We agree.
Trademark Rule 2.61(b) provides:
The examiner may require the applicant
to furnish such information and exhibits
as may be reasonably necessary to the
proper examination of the application.
The Trademark Rules of Practice have the effect of law and
failure to comply with a request for information is grounds
for refusal of registration. In re Babies Beat, Inc., 13
USPQ2d 1729, 1731 (TTAB 1990); In re Big Daddy’s Lounges,
Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and
Ser No. 75/066,101
15
Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re
Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).
We agree that the Examining Attorney’s requests for
information herein were prompted by applicant’s assertion
that his use of the numbers 888 in the asserted mark is not
or will not be descriptive. These requests were reasonably
necessary for the proper examination of this application.
That is to say, because this is an intent-to-use
application, the Examining Attorney, we believe correctly,
asked applicant whether the asserted mark will at any time
be used as a telephone number. Such a request is relevant
to the perception of a mark. The Examining Attorney’s
additional requests for the submission of advertising or
promotional materials (if available) or, in the alternative,
to describe the nature and channels of trade of applicant’s
services, are also legitimate requests for information. The
manner in which a mark is likely to be encountered by the
public has a bearing upon its perception by the public.
Also, and contrary to applicant’s contention, we do not
believe that a statement of whether the mark will be used as
a phone number forms “some covenant with the Patent Office
regarding future use as a telephone number.” Applicant’s
brief, 3. Accordingly, we agree with the Examining Attorney
that applicant’s failure to respond completely to the
Examining Attorney’s requests for information required the
Ser No. 75/066,101
16
Examining Attorney to proceed with an incomplete
understanding of how applicant’s asserted mark is or will be
used, and without materials which would have allowed the
Examining Attorney to conduct a more thorough and informed
evaluation of the issue of mere descriptiveness.
Applicant’s failure to fully comply with the requirements
for additional information, therefore, also justifies
refusing registration.
Decision: The refusals of registration are affirmed.
R. L. Simms
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Cissel, Administrative Trademark Judge, concurring in part
and dissenting in part:
While I agree with my colleagues that the requirements
made by the Examining Attorney should be affirmed, I
respectfully disagree with their ruling on the question of
whether the proposed service mark is merely descriptive of
the services with which applicant intends to use it.
I do agree with most of the factual conclusions reached
by the Examining Attorney and my colleagues on the Board.
For example, the majority quotes from the Examining
Ser No. 75/066,101
17
Attorney’s statement that “… placing 888 in front of PATENTS
creates a mark that looks, sounds, and gives the overall
impression of being a phone number…” The majority states
that “[i]n the context in which applicant’s asserted mark
will be seen by potential customers of applicant’s legal
services relating to patents, we have no doubt that this
asserted mark will be perceived as a telephone number, and
not as a ‘fanciful… highly distinctive mark’ for applicant’s
patent services.”
I further agree with the majority’s conclusion that the
legal precedent is not much help in determining whether the
asserted mark in the instant case is merely descriptive of
the services set forth in the application because previous
cases concerning marks that appear to be telephone numbers
generally involve issues of unfair competition and
likelihood of confusion, rather than descriptiveness. A
final point of agreement is with the statement at the
conclusion of the majority’s discussion of the
descriptiveness issue that as part of the phone number, “…
the 888 prefix in the mark does not have any source-
identifying significance. Rather, in our view, the numbers
will be readily perceived as nothing more than the prefix
used in a toll-free telephone number, without trademark (or
service mark) significance.”
Ser No. 75/066,101
18
While I agree that, depending upon how it will be used,
“888 PATENTS” may be likely to be perceived as a toll-free
telephone number, it does not logically follow from that
conclusion that “888 PATENTS” is merely descriptive of the
legal services applicant intends to render under this mark.
The majority opinion is predicated on the idea that
because “888 PATENTS” will be viewed as a toll-free
telephone number, “888” will be seen only as the toll-free
area code, the first three digits of the phone number.
Based on that assumption, the majority reasons that “888”
would have no significance as an indication of source. They
then reason that the term “PATENTS” is the only remaining
element in the mark, but “PATENTS” is merely descriptive of
applicant’s patent services, so the entire mark is merely
descriptive.
I cannot adopt this reasoning because it assumes a fact
not yet established by the record, an assumption with which
applicant has openly disagreed, namely, that the mark will
be used only as a toll-free telephone number and will be
understood to be a toll-free telephone number by the people
to whom it is presented.
It seems to me that the unstated, underlying basis for
refusing to register this mark is the assumption that when
it is actually used by applicant, it will function only as
applicant’s phone number, and not as a service mark. That
Ser No. 75/066,101
19
determination, however, cannot be made at this juncture,
prior to applicant’s actual use of the mark. If and when
applicant files a statement of use claiming use of “888
PATENTS” as a mark, then the Examining Attorney will have to
decide, based on the specimens of use, whether the matter
sought to be registered has been shown to be used as a
service mark. The issue of mere descriptiveness because
“888” has no service mark significance might also be raised
then, based on the way the proposed mark is being used by
applicant.
Whether or not applicant is likely to be able to
establish service mark use at that time should not be used
now as justification for finding that the proposed mark is
unregistrable because it is merely descriptive of the
services with which it will be used. Simply put, unless the
use of the mark as a telephone number establishes that the
number “888” in the mark has no trademark or service mark
significance, “888” cannot be ignored in the analysis used
to determine whether the mark as a whole is merely
descriptive. At this point, prior to actual use of the
mark, I cannot conclude that combining the number “888,”
which is not even argued to be descriptive of the legal
services set forth in the application, with the word
“PATENTS,” which has been conceded by applicant’s disclaimer
Ser No. 75/066,101
20
to be descriptive of the stated services, renders the mark
in its entirety merely descriptive of those services.
R. F. Cissel
Administrative Trademark Judge
Trademark Trial and
Appeal Board