Open Access Technology International, Inc.

Trademark Trial and Appeal Board

May 16, 2012

No. 77950537 (T.T.A.B. May. 16, 2012)

Mailed: May 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Open Access Technology International, Inc.
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Serial No. 77950537
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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 WEBOMS (in standard characters) for “Computer
software, namely, an outage management system subscribers
can use to report outages” 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
Serial No. 77950537
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
Serial No. 77950537
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 record also shows that
“OMS” is a recognized abbreviation for “outage management
system.” A Wikipedia entry describes “Outage management
system (OMS)” as “a computer system used by operators of
electric distribution systems to assist in restoration of
power.” This corroborates other evidence submitted by the
examining attorney including printouts from several third-
party websites discussing software used in connection with
outage management systems while using the acronym OMS. For
example, the “Milsoft Utility Solutions” website shows a
“SOFTWARE SOLUTIONS” page with the following passage,
“Outage Management. Demand for stable and reliable OMS

1 All evidence referenced in this decision was attached to Office
action dated April 19, 2011. Definition entry for “Web” taken
from The American Heritage Dictionary of the English Language
(2007 Houghton Mifflin Company).

Serial No. 77950537
4
solutions is on the rise as utilities now understand the
efficiencies gained by managing outages with OMS …”
Based on the record, we find that when the proposed
mark, WEBOMS, is applied to computer software used for an
outage management system where subscribers may report
outages, said mark would be immediately understood by
prospective purchasers as describing the purpose and/or a
key feature of the software. That is, consumers will
readily understand that the initial term WEB is describing
that the software is Internet (or “Web”) based. Although
applicant’s software is not restricted in this manner, the
identification encompasses any Web based software. As to
the latter term, OMS, it is clearly descriptive inasmuch as
it tells consumers the field or purpose of the software,
i.e., the software will be used to control or assist an OMS
or outage management system. Taken together, the two terms
do not lose their respective descriptive significance and
the combination of the terms does not create any new, non-
descriptive meaning or a unique commercial impression.
In arguing that its proposed mark is not merely
descriptive, applicant asserts that “WEBOMS is a made-up
mark,” that the examining attorney “improperly pulls the
mark apart into two separate terms which he then considers
separate, rather than as a whole as is proper,” and that
Serial No. 77950537
5
the examining attorney “was not able to show that the mark
was in use anywhere else as a description of the same or
related goods.” These arguments are, however, contrary to
long-standing precedent. First, 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). Second,
it is well established that the fact that no other
competitor is using the mark does not justify registration
when the only significance projected by the proposed mark
is merely descriptive. See In re Hunter Fan Co., 78 USPQ2d
1474, 1476 (TTAB 2006) (“a word need not be in common use
in an industry to be descriptive, and the mere fact that an
applicant is the first to use a descriptive term in
connection with its goods, does not imbue the term with
source-identifying significance”); In re Alpha Analytics
Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002).
In sum, applicant’s proposed mark WEBOMS is merely
descriptive of the identified goods.
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Decision: The refusal to register is affirmed.