Morris Digital Works, LLC

Trademark Trial and Appeal Board

Dec 3, 2007

No. 78730590 (T.T.A.B. Dec. 3, 2007)

Mailed: December 3, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Morris Digital Works, LLC
________

Serial No. 78730590
_______

Timothy E. Moses of Hull, Towill, Norman, Barrett & Salley
for Morris Digital Works, LLC.

Sung In, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Hohein, Hairston and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Morris Digital Works, LLC has filed an application to
register on the Principal Register the mark MDREALESTATE
(in standard character form) for goods and services
ultimately identified as “computer software for the
creation and display of online advertising that may be
downloaded from a global computer network” in Class 9 and
“dissemination of advertising for others via an online
communications network on the internet; [and] on-line
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser No. 78730590

2
advertising on computer communication networks” in Class
35.1
The trademark examining attorney has issued a final
refusal to register on the ground that applicant’s mark
MDREALESTATE merely describes a feature of applicant’s
goods and services. Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e)(1). After the refusal was made final,
applicant appealed. Applicant and the examining attorney
filed briefs.2 We affirm the refusal to register.
In support of the refusal, the examining attorney has
submitted the following dictionary definitions, (emphasis
in the originals) in relevant part, of “MD”:
Maryland;3
• abbreviation 3. Maryland;4 and

ABBREVIATION: 1. also Md. Maryland.5

1 Serial No. 78730590, filed October 11, 2005 and alleging June
2000 as the date of first use of the mark anywhere and November
2000 as the date of first use of the mark in commerce.
2 The evidence attached to applicant’s brief is the same as that
previously submitted with its response to the examining
attorney’s first office action. Accordingly, it is already of
record as part of the application file, and its submission was
unnecessary. See ITC Entertainment Group Ltd. v. Nintendo of
America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (submission of
duplicative papers is a waste of time and resources, and is a
burden upon the Board).
3 Encarta online dictionary.
4 Compact Oxford English Dictionary (online).
5 The American Dictionary of the English Language (4th ed. 2004).

Ser No. 78730590

3
The examining attorney also relies on the
following definitions, in relevant part, (emphasis in
the originals) of “real estate”:
noun
Definition:
North America immovable property: land including
all property on it that cannot by moved and any
attached rights;6

noun chiefly N. Amer. real property; land;7 and
Function: noun
: property in buildings and land.8
The examining attorney argues, based on these
definitions, that because “MD” is a common abbreviation for
the state of Maryland and “REAL ESTATE” refers to property
consisting of land and buildings, applicant’s mark, as a
whole, has the meaning of land and buildings in the state
of Maryland. In particular, the examining attorney argues
that:
As the goods and services of the application
are “Computer software for the creation and
display of online advertising that may be
downloaded from a global computer network”
in International Class 9 and “Dissemination
of advertising for others via an online
communications network on the internet; On-
line advertising on computer communication
networks” in International Class 35, the

6 Encarta online dictionary.
7 Compact Oxford English Dictionary (online).
8 Merriam-Webster Online Dictionary.

Ser No. 78730590

4
mark is descriptive in that the online
advertising created by the goods of the mark
and disseminated as a result of the services
could refer to real estate available in the
state of Maryland.

(Examining attorney’s brief at p. 4). Further, the
examining attorney argues that applicant’s goods and
services, as identified, are not limited in terms of
classes of purchasers, and it must be presumed, therefore,
that such goods and services will be available to all
potential customers. Finally, the examining attorney
contends that the components of the mark when taken
together do not create a unitary mark with a separate,
nondescriptive meaning and, therefore, the proposed mark MD
REALESTATE merely describes applicant’s goods and services.
Applicant, in urging reversal of the refusal to
register, contends that the purchasers of its goods and
services would not perceive the mark as being merely
descriptive. Applicant contends that its goods and
services are purchased by newspapers, and that the
purchasing process affords such purchasers substantial
opportunity and time to understand that “MD” has no express
or implied association with the state of Maryland, but
instead refers to applicant (Morris Digital Works).
Further, applicant argues that the acronym “MD” has
multiple meanings (e.g., medical doctor, managing director,
Ser No. 78730590

5
muscular dystrophy, medical department, etc.) which have no
descriptive significance in relation to applicant’s goods
and services. Finally, applicant argues that it is common
practice for the purchasers of its good and services, i.e.,
newspapers, to “brand” the advertising created and
disseminated by means of its computer software and
advertising dissemination and on line advertising service
with their own name and logo. Thus, it is applicant’s
position that only newspaper owners with whom it does
business will encounter applicant’s mark MDREALESTATE.
As evidentiary support for its position, applicant has
submitted printouts from a variety of websites, including
its own, primarily to support its contention that it
markets its goods and services to newspapers and that these
newspapers are “sophisticated” purchasers.
A mark is merely descriptive if it immediately
describes the ingredients, qualities or characteristics of
the goods or services, or if it conveys information
regarding a function, purpose or use of the goods or
services. 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 goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
Ser No. 78730590

6
attribute, feature or property of the goods or services.
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
is being used or intended to be used, 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 Recovery, Inc., 196 USPQ 830 (TTAB 1977);
see also, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB
1999)(DOC in DOC-CONTROL would be understood to refer to
the documents managed by applicant’s software, and not
doctor as shown in the dictionary definition).
In this case, we find that the mark MDREALESTATE is
merely descriptive of the identified computer software and
advertising dissemination and online advertising services.
As noted previously, the determination of mere
descriptiveness must be made in relation to the goods and
services recited in the application. In re Recovery,
supra. That is, we are obligated to determine the question
of registrability based on the identification of goods or
recitation of services as set forth in the application for
registration, subject only to limitations as to scope,
channels of trade, etc. as are specified therein, or which
Ser No. 78730590

7
are implicitly normal for goods of the same nature. In re
Allen Electric Equipment Co., 458 F.2d 1404, 173 USPQ 689
(CCPA 1972); In re Vehicle Information Network, Inc., 32
USPQ2d 1542 (TTAB 1994) and In re Cryomedical Services,
Inc., 32 USPQ2d 1377 (TTAB 1994).
Although applicant argues that its purchasers are
newspapers and that its goods and services are marketed
only at newspaper industry or publishing industry
tradeshows, and not through retail trade channels, there
are no pertinent limitations in the recitation of goods and
services. As such, the recitation is broad enough to
encompass computer software for the creation of
advertising, and advertising dissemination and online
advertising services that are marketed to individuals or
businesses seeking to sell real estate located in the state
of Maryland. In other words, for purposes of our
descriptiveness analysis, we cannot imply or otherwise
consider the limitations urged by applicant, i.e., that the
identified goods and services are marketed only to
newspapers via industry tradeshows where purchasers and
prospective purchasers would understand the meaning of “MD”
as used in its mark.
Considering then the mark MDREALESTATE in connection
with the applicant’s computer software for the creation of
Ser No. 78730590

8
adverting and dissemination of advertising and online
advertising services, we find that the mark is merely
descriptive thereof, given the definitions of record. We
find that the terms “MD” and “REAL ESTATE” have descriptive
significance as used in connection with such goods and
services because the advertising created by applicant’s
software and disseminated by means of applicant’s services
may feature real estate located in the state of Maryland.
Indeed, applicant acknowledges that its goods and services
could relate to advertising in the state of Maryland
insofar as newspapers in Maryland and its surrounds could
list properties for sale in that state. (Applicant’s brief
at unnumbered p. 2).
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods and services, then the resulting
combination is also merely descriptive. See, e.g., In re
Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER
held merely descriptive of commercial and industrial
cooling towers).
Contrary to applicant’s contention, we find that the
designation MDREALESTATE, as a whole, is descriptive of
Ser No. 78730590

9
applicant’s computer software and advertising dissemination
and online advertising services. When the mark
MDREALESTATE is viewed on or in connection with such goods
or services, there is nothing in the mark which is
incongruous, nor is there anything which would require the
gathering of further information, in order for the merely
descriptive significance thereof to be readily apparent to
prospective purchasers of the goods and services. See, for
example, In re Abcor Development Corp., Inc., supra. (Rich,
J., concurring) [GASBADGE described as a shortening of the
name “gas monitoring badge”]; and Cummins Engine Co., Inc.
v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559
(CCPA 1966) [TURBODIESEL held generically descriptive of
engines having exhaust driven turbine super-chargers].
That is, the combination of the abbreviation “MD” and the
word “REALESTATE” fails to create a new and distinct
commercial impression.
We also find applicant’s argument that because so many
possible meanings can be attributed to the “MD” portion of
its proposed mark that potential purchasers and end users
of its software must engage in some “thought or perception”
to determine what meaning is associated with “MD”
unavailing. As stated earlier, the fact that a term may
have meanings other than the one relevant to the goods and
Ser No. 78730590

10
services in issue here is not controlling; it is enough
that a feature of applicant’s goods and services is
included within the relevant meaning of the term. See in
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); and In re
Polo Int’l, Inc., supra. In this case, the pertinent
definition of “MD” is Maryland, inasmuch as the subject
matter of the advertising created by applicant’s computer
software and advertising dissemination and online
advertising services could include Maryland real estate.
We therefore conclude that when applied to applicant’s
goods and services, the designation MDREALESTATE
immediately describes, without any kind of mental
reasoning, a feature of the goods and services listed in
the application, namely that applicant’s computer software
for the creation and display of online advertising that may
be downloaded from a global computer network, dissemination
of advertising for others via an online communications
network on the internet, and online advertising on computer
communication networks could feature real estate located
within the state of Maryland.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.