Nucleus Research Inc.

Trademark Trial and Appeal Board

Nov 23, 2004

No. 76428914 (T.T.A.B. Nov. 23, 2004)

Mailed: 11/23/04
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nucleus Research Incorporated
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Serial No. 76428914
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Robert P. Smith of Kirkpatrick & Lockhart for applicant.
Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
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Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Nucleus Research
Incorporated to register the mark THE ROI EXPERTS for
“consumer research of goods and services; and providing
product and service reviews relating to computers, computer
software, online services, high technology communications,
information technology and information services.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
1 Application Serial No. 76428914, filed July 8, 2002, alleging
first use anywhere and first use in commerce on August 30, 2000.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76428914
2
that applicant’s mark, when applied to applicant’s goods,
is merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
The examining attorney maintains that “ROI” is an
acronym for “return on investment,” and that the mark is
laudatorily descriptive of applicant’s self-proclaimed
expert services pertaining to return-on-investment
information, analysis or advice. In support of the
refusal, the examining attorney introduced dictionary
definitions of “expert,” “ROI” and “return on investment,”
as well as excerpts from applicant’s web page. The
examining attorney also relied upon applicant’s specimens.
Applicant claims that the mark does not directly
provide any information about applicant’s services that are
not return-on-investment studies, but rather are product
and service reviews that help companies evaluate technology
investment. Applicant contends that the term “return-on-
investment” analysis describes a technology investment
analysis that differs from applicant’s product and service
reviews. According to applicant, although “ROI” may be
descriptive of an activity that follows the rendering of
Ser No. 76428914
3
the identified research and review services, “ROI” is not
descriptive of the identified services.
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,
217-18 (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
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. That a term may have other meanings in
Ser No. 76428914
4
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). As the Board has
explained:
....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).
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the goods or services, the
combination results in a composite that is itself
descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs]; In re
Ser No. 76428914
5
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) [FOOD &
BEVERAGE ONLINE merely descriptive of news information
services for the food processing industry]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays].
The abbreviation “ROI” stands for “return on
investment” which in turn is defined as follows:
A calculation that considers the
projected economic benefits of an
investment as a percentage of the
investment cost; for example, if a
company invests $10,000 in a new
computer system and can document
$20,000 in future savings due to the
installation of the system, the return
on investment is 100 percent.
Webster’s New World Dictionary of Computer Terms (8th ed.
2000). The term “expert” means “a person with a high
degree of skill in or knowledge of a certain subject.” The
American Heritage Dictionary of the English Language (3rd
ed. 1992).
Applicant’s promotional information contains repeated
references to “ROI” as a feature or purpose of applicant’s
services. A review of applicant’s substitute specimen
shows that applicant describes itself as an “industry
research firm providing ROI-focused research and advisory
services to help companies quantify and maximize the value
Ser No. 76428914
6
of their technology investment.” A review of applicant’s
web site shows that it touts that “5 of the top 10
technology vendors refer their customers to [applicant] for
unbiased ROI advice,” and that applicant provides
“expertise” and “ROI analysis you can trust” by “help[ing]
CFOs, CIOs, and technology decision makers make the right
decisions by accurately measuring the benefits and cost of
planned and ongoing IT investments.” The web page also
states: “We deliver 100% impartial return-on-investment
(ROI) information to organizations worldwide,” and that
applicant provides “CFOs and CIOs with the financial and
technology information they need to accurately assess ROI
and manage their technology investments to maximize value.”
Applicant claims on its web site that “our analysts have
conducted thousands of ROI studies for clients.”
Based on the record before us, we find that the mark
sought to be registered is laudatorily descriptive. It is
clear that applicant’s consumer research services and
product and service reviews are rendered with an eye toward
return-on-investment analysis and advice. Although
applicant’s specific services identified in the application
may not involve ROI calculations, applicant’s services are
an integral part of applicant’s ROI analysis; the fact that
a return-on-investment analysis follows applicant’s
Ser No. 76428914
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research and product review services is of no consequence
in our determination of the mere descriptiveness of
applicant’s mark. Without first rendering consumer
research and product review services, applicant would be
unable to engage in a valid ROI analysis.
Lastly, it hardly need be stated that the addition of
the term “THE” does not change the merely descriptive
nature of the mark inasmuch as the term has no trademark
significance here. Conde Nast Publications v. The Redbook
Publishing Co., 217 USPQ 356 (TTAB 1983).
We conclude that, when used in connection with
applicant’s consumer research and product review services,
the mark THE ROI EXPERTS is laudatorily descriptive, that
is, that applicant has expertise in return-on-investment
(or ROI) analysis and advisory services, of which consumer
research and product and service reviews are an integral
part.
Decision: The refusal to register is affirmed.