Open Access Technology International, Inc.

Trademark Trial and Appeal BoardMay 17, 2012

No. 77950529 (T.T.A.B. May. 17, 2012)

Mailed: May 17, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Open Access Technology International, Inc. ________ Serial No. 77950529 _______ Richard A. Arrett of Vidas, Arrett & Steinkraus PA for Open Access Technology International, Inc. Eli J. Hellman, Trademark Examining Attorney, Law Office 112 (Angela Bishop Wilson, Managing Attorney). _______ Before Bucher, Kuhlke, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Open Access Technology International, Inc. filed, on March 4, 2010, an intent-to-use application to register the mark WEBASSETS (in standard characters) for “computer software for the management of energy industry asset related data” in International Class 9. 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 is merely descriptive of the identified goods. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77950529 2 When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs. A term is deemed to be merely descriptive of services within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of a quality, characteristic, feature, function, purpose or use of the services. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor Development, 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 services in order to be considered merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the services. 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 services for which registration is sought, the context in which it is being used on or in connection with the services, and the possible significance that the term would have to the average purchaser of the services because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether someone presented with only the mark could guess what the Ser. No. 77950529 3 goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). The record demonstrates that the term “web” is an abbreviation for “world wide web” which is defined as “the complete set of documents residing on all Internet servers that use the HTTP protocol, accessible to users via a simple point-and-click system.”1 The term “asset” is defined as “a valuable item that is owned.”2 When the WEBASSETS is used on computer software in the field of management of energy industry asset related data, we agree with the examining attorney that this proposed mark will be immediately understood by prospective purchasers as describing a key feature of the software. That is, WEBASSETS informs the consumer that the software is Internet (or “Web”) based and will be used for managing asset data, such as the “energy industry asset related data.” Due to the broad scope of the identification of goods, the issue of whether or not applicant’s software is in actuality web-based is irrelevant. As the examining 1 Abbreviation and definition evidence attached to Office action dated June 21, 2010. Definition taken from The American Heritage Dictionary of the English Language (2007 Houghton Mifflin Company). 2 Id. Ser. No. 77950529 4 attorney has pointed out, applicant’s goods are identified “so broadly as to encompass Web based software.” Brief, p. 3. Applicant’s central argument that the proposed mark is not merely descriptive relies on the lack of spacing between the terms “web” and “assets” and the fact that the proposed mark “is a made-up term, and should not be examined as two separate terms ...” Reply brief, p. 4. However, this argument is contrary to long-standing precedent holding that the combination of two descriptive terms, with or without a space, does not result in a non- descriptive mark, absent any new meaning or unique commercial impression created by such combination. See In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation, and real estate listing services). Here, applicant has not pointed to any new meaning or unique commercial impression resulting from the combination of WEB and ASSETS. The two terms retain their descriptive significance and thus the proposed mark, as a whole, is merely descriptive. Ser. No. 77950529 5 In sum, applicant’s proposed mark WEBASSETS is merely descriptive of the identified goods. Decision: The refusal to register is affirmed.