Planalytics, Inc.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 76322156 (T.T.A.B. Mar. 30, 2004)

Mailed: 30 MAR 2004
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Planalytics, Inc.
________
Serial No. 76322156
_______
Timothy D. Pecsenye of Blank Rome LLP for Planalytics, Inc.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On October 5, 2001, Planalytics, Inc. (applicant)
applied to register the mark GASBUYER in typed form on the
Principal Register for services ultimately identified as
“providing on-line risk management services in the field of
pricing and purchasing decisions for natural gas” in
International Class 36. Serial No. 76322156. While the
application was originally based on a claim that applicant
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser. No. 76322156
2
had first used the mark anywhere and in commerce on June 1,
2000, in its Request for Reconsideration, applicant deleted
that basis and amended the application to allege a bona
fide intention to use the mark in commerce.
The examining attorney refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because the mark GASBUYER “describes the intended user of
the services.” Brief at 3. The examining attorney also
refused to register the mark because applicant did not
comply with the requirement for information under 37 CFR
§ 2.61(b). Applicant maintains that its mark is “a unique,
coined term” that is suggestive but not descriptive.
Applicant’s Brief at 9.
After the examining attorney made the refusals final,
applicant appealed to this Board.
We affirm on both grounds.
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
Ser. No. 76322156
3
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
A mark can be descriptive if it describes the intended
users of the goods or services. Shaw-Barton, Inc. v. John
Baumgarth Co., 313 F.2d 167, 136 USPQ 116, 117 (7th Cir.
1963), cert. denied, 374 U.S. 831 (1963) (“We hold that the
word "Homemakers," when applied to calendars of the type
involved in this suit, is a noun descriptive of that class
of individuals toward which the design and proposed use of
the product is oriented”) (footnote omitted); In re Hunter
Publishing Co., 204 USPQ 957 (TTAB 1979) (“[I]t has been
consistently held that a mark which describes the intended
users of a particular product is merely descriptive of such
goods.” JOBBER AND WAREHOUSE EXECUTIVE for a trade
magazine held descriptive of the class of purchasers); In
re Camel Mfg. Co., 222 USPQ 1031, 1032 (TTAB 1984)
(“[T]here is no doubt that the group described by the term
‘MOUNTAIN CAMPER’ is a category of purchaser to whom
applicant specifically directs its camping equipment ;”
Ser. No. 76322156
4
MOUNTAIN CAMPER held descriptive of retail services in the
field of selling camping equipment); Hunter Publishing Co.
v. Caulfield Publishing, Ltd., 1 USPQ2d 1996, 1998 (TTAB
1986) (SYSTEMS USER is descriptive of the readers of a
magazine directed at computer users).
To support her position that applicant’s mark is
merely descriptive, the examining attorney submitted
numerous printouts from the Internet and from the
LEXIS/NEXIS database. The evidence shows that the term
“gas buyer” or “gas buyers” is a term applied to people who
purchase natural gas supplies.
It secured most of the permits needed to build the
pipeline, and it has received preliminary orders from
some Asian gas buyers.
Anchorage Daily News, October 12, 2001.
To ensure low costs on some of its contracts with
natural gas-fired plants, the state is setting up shop
as a gas buyer so it can supply those plants with
inexpensive fuel.
San Francisco Chronicle, August 12, 2001.
Wholesale gas buyers thought they could wait and get
better prices, but that did not happen, because demand
was outstripping natural-gas supplies.
Philadelphia Inquirer, July 28, 2001.
[N]atural-gas buyers went into a frenzy, seeking to
secure sufficient product.
Denver Westword, October 4, 2001.
Make-Up Gas
In a gas buyer’s contract there are often terms which
allow the buyer to take make-up gas in contract
periods after it has been paid but not taken.
www.financewise.com.
Ser. No. 76322156
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[T]he producer, who is a seller of natural gas, would
seek downside protection by buying puts, a gas buyer
would purchase calls.
www.nymex.com.
In addition to this evidence that shows that “gas
buyer” or “gas buyers” are terms commonly applied to
purchasers of natural gas supplies, the examining attorney
also included evidence that the term “gas buyer(s)” was
used in conjunction with “risk management.”
[T]hese high hedge costs definitely discourage active
risk management by natural gas buyers.
TheStreet.com, October 17, 2001.
That combination tends to increase volatility, and gas
buyers need a plan to manage that volatility, Peak
stressed.
Regulators need to allow utilities to employ risk
management techniques, financial hedging strategies
and most importantly, recover losses incurred by
financial hedging.
Inside F.E.R.C. Gas Market Report, May 9, 2003.
These include: encouraging verification of data from a
company’s back office or a senior official overseeing
the trading operation or risk management… [W]hen
industry-wide concerns were raised over California gas
prices two years ago numerous regional gas buyers and
sellers … subsequently answered the call…
Natural Gas Week, April 24, 2003.
[I]ncrease in demand by electric generators at a time
when natural gas supply was short[,] forced natural
gas buyers to bid high ... "The natural gas market has
been workably competitive for some time, and it is
that very volatility that has inspired the hedging and
risk management tools that have been successful in the
natural gas market."
Foster Electric Report, October 23, 2002.
Ser. No. 76322156
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Applicant maintains that its term “is not GAS BUYERS,
but rather GASBUYER, a unique, coined term that never
appears in the evidence.” Applicant’s Brief at 9 (internal
quotation marks omitted). In response, we note that both
the singular and the plural terms, GAS BUYER and GAS BUYERS
appear in the evidence of record.
Inasmuch as it clear that the terms “gas buyer” and
“gas buyers” are commonly used to refer to the
institutional purchasers of natural gas, we assume that
when applicant argues that its mark is “a complete
fabrication of the English language” (Applicant’s Brief at
10), it is referring to the fact that applicant spells its
term without a space between “gas” and “buyer.” The
absence of the space is not significant here. First, we
cannot see how the absence of the space creates a different
meaning or perception of the term. Whether the term
appears as GAS BUYER or GASBUYER, it would be understood by
the relevant consumers to have the same meaning, a buyer of
natural gas. The Supreme Court has long ago recognized
that slight variations in spelling do not change a
descriptive term into a non-descriptive term.
The word, therefore is descriptive, not indicative of
the origin or ownership of the goods; and being of
that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled.
Bad orthography has not yet become so rare or so
Ser. No. 76322156
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easily detected as to make a word the arbitrary sign
of something else than its conventional meaning….
Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.
446, 455 (1911) (emphasis added).
Other cases have recognized that a slight misspelling
does not change a merely descriptive term into a suggestive
term. See Armstrong Paint & Varnish Works v. Nu-Enamel
Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU found equivalent
of “new”); In re Quik-Print Copy Shops, 616 F.2d 523, 205
USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive;
“There is no legally significant difference here between
‘quik’ and ‘quick’”); Hi-Shear Corp. v. National Automotive
Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE
“is the phonetic equivalent of the words ‘HIGH TORQUE’”);
and In re Organik Technologies Inc., 41 USPQ2d 1690, 1694
(TTAB 1997) (“ORGANIK, which is the phonetic equivalent of
the term ‘organic,’ is deceptive”).
In the following cases specifically involving a
misspelling consisting of the deletion of a space between
words, the combined term remained descriptive. See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1017 (Fed. Cir.
1987) (SCREENWIPE generic for a wipe for cleaning
television and computer screens); In re Abcor Dev., supra,
(GASBADGE at least descriptive for gas monitoring badges;
Ser. No. 76322156
8
three judges concurred in finding that term was the name of
the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977) (BREADSPRED descriptive for jams and jellies that
would be a spread for bread); In re Perkin-Elmer Corp., 174
USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for
interferometers utilizing lasers). There is nothing in the
facts of this case that would lead us to conclude that the
term “gasbuyer” would not, in the same manner, be seen as
the equivalent of “gas buyer.” Therefore, the term
GASBUYER would likewise be merely descriptive of
applicant’s services.
While applicant notes that “[n]o such word as GASBUYER
really exists in the dictionary” (Applicant’s Brief at 11),
the presence of a term in the dictionary is not a condition
precedent for a finding that a term is merely descriptive.
In re Gould Paper, supra (SCREENWIPE); In re Abcor Dev.,
supra (GASBADGE); In re Tower Tech, Inc., 64 USPQ2d 1314
(TTAB 2002) (SMARTTOWER merely descriptive, no dictionary
definition of term).
Additionally, applicant argues that the examining
attorney has improperly dissected its mark. However,
applicant’s mark consists of the combined words “gas” and
“buyer” without a space in typed form. The examining
attorney’s evidence shows that the same words with a space
Ser. No. 76322156
9
are used to describe people who buy natural gas. This
evidence shows that the mark as a whole is descriptive, not
just the individual parts of applicant’s mark.
Applicant also argues that its “services are geared
toward risk management and business-related decisions and
not towards the ‘gas buyers’ cited in evidentiary articles.
In so doing, the Examining Attorney disregards the fact
that Planalytics’s services are not used by ‘gas buyers,’
or even as a substitute for a human ‘gas buyer.’”
Applicant’s Brief at 8.1 Applicant also asserts that its
mark “does not ‘merely describe’ the market research and
risk management services actually provided under the mark.
The GASBUYER mark has no relation to a person or entity
that buys natural gas.” Id. However, applicant does
acknowledge that “all of the evidence provided by the
Examining Attorney supports the proposition that GASBUYER
may be merely descriptive of the purchasing of natural
gas,” going on to assert that “it is suggestive of ‘risk
management services in the field of pricing and purchasing
natural gas.’” Applicant’s Brief at 9.
1 We observe that applicant attempted to submit a specimen of use
prior to changing the application to one that is based on an
intention to use the mark. That specimen broadly indicated that
applicant’s services “can be used by any company that buys or
sells physical gas, gas futures, or other derivatives … including
utilities, power generators, energy companies and
commercial/industrial end-users of gas.”
Ser. No. 76322156
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Applicant’s identification of services makes it clear
that its services are directed to those who are in the
field of making purchasing decisions for natural gas. The
evidence supports the conclusion that these people would be
referred to as gas buyers. While applicant’s mark does not
describe every feature or characteristic of its services,
there is no requirement that a mark must do this before it
can be found to be merely descriptive of the services.
Gyulay, 3 USPQ2d at 1009; Meehanite Metal, 120 USPQ at 294.
Clearly, applicant’s mark describes a feature or
characteristic of the services to the extent that it
immediately conveys that its services are intended for
individuals who purchase natural gas.
Therefore, we agree with the examining attorney’s
conclusion that the mark GASBUYER is merely descriptive of
applicant’s identified services.
We now address the refusal to register on the ground
that applicant did not comply with the examining attorney’s
requirement for information. In the first Office action
(page 4), the examining attorney required the applicant to
state whether the term GASBUYER has any significance in the
trade or any relation to the services. In addition, she
required applicant to “submit product information for the
identified goods/services. This may take the form of a
Ser. No. 76322156
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fact sheet, an instruction manual, and/or advertisements.”
First Office Action at 5. When applicant did not respond
to this requirement, the examining attorney made the
requirement final, along with her refusal to register the
mark on the ground of descriptiveness. In its Request for
Reconsideration (p. 14), after traversing the
descriptiveness refusal, applicant added that “information
regarding its services may be found on its web-site,
located at www.planalytics.com.” The examining attorney,
in her denial of the request for reconsideration at 2,
noted that the requirement is for applicant “to provide
such information and make the information of record.”
Applicant did not address the issue in its brief and
the examining attorney argues that applicant has not
complied with her requirement for information.
Trademark Rule 2.61(b), 37 CFR 2.61(b), provides that
the “examiner may require the applicant to furnish such
information and exhibits as may be reasonably necessary to
the proper examination of the application.” More
specifically, the “examining attorney may request
literature, exhibits, and general information concerning
circumstances surrounding the mark and, if applicable, its
use or intended use.” TMEP § 814 (3rd ed. 2003).
In interpreting this rule, the Board has noted that:
Ser. No. 76322156
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Trademark Rule 2.61(b) provides that the Examining
Attorney may require the applicant to furnish such
information and exhibits as may be reasonably
necessary to the proper examination of the
application. In response to a request for information
such as the Examining Attorney made in this case, an
applicant has several options. It may comply with the
request by submitting the required advertising or
promotional material. Or it may explain that it has
no such material, but may submit material of its
competitors for similar goods or provide information
regarding the goods on which it uses or intends to use
the mark. Or it may even dispute the legitimacy of
the request, for example, if the goods identified in
the application are such ordinary consumer items that
a request for information concerning them would be
considered unnecessary and burdensome.
In re SPX Corporation, 63 USPQ2d 1592, 1597 (TTAB 2002).
The examining attorney required applicant to provide
fact sheets, promotional material, advertising material,
and/or other product information. There is no argument
that this requirement was not reasonable or legitimate.
See In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999) (“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”). Information as to the exact nature of
applicant’s services and how it promotes its services is
often very helpful in evaluating whether the mark describes
a feature or characteristic of the identified services.
See, e.g., In re Babies Beat Inc., 13 USPQ2d 1729, 1730
Ser. No. 76322156
13
(TTAB 1990) (“In summary, in reviewing applicant’s own
literature, we find that the degree of design utility
encompassed by applicant’s design is so great that
applicant’s design is de jure functional”) (emphasis
added).
Therefore, the next question is whether applicant has
complied with this requirement. Applicant’s only response
to this requirement was to refer the examining attorney to
its website. Applicant’s curt dismissal of the requirement
for information by telling the examining attorney, in
effect, “to look it up herself,” is inappropriate. An
applicant has an obligation to produce the information that
the examining attorney requested whether it is on a website
or not. This is not a technical requirement.
If an applicant has relevant information, it is
incumbent on applicant to make this information of record.2
A mere reference to a website does not make the information
of record. In order to review the facts in this case,
there should be evidence in the record. Also, if there
should be further review, Congress has required that the
“Director shall transmit to the United States Court of
Appeals for the Federal Circuit a certified list of the
2 If applicant does not believe it has any relevant information,
it should so inform the examining attorney.
Ser. No. 76322156
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documents comprising the record in the Patent and Trademark
Office.” 15 U.S.C. § 1071(a)(3). See also In re Zurko,
258 F.3d 1379, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001)
(“[T]he Board must point to some concrete evidence in the
record in support of these findings. To hold otherwise
would render the process of appellate review for
substantial evidence on the record a meaningless exercise”)
(footnote omitted).
In this case, the examining attorney has required
applicant to produce fact sheets, promotional material,
advertising material, and/or other product information.
This information may or may not be available on applicant’s
website. To the extent applicant may have thought the
reference to its website was a proper response, the
examining attorney disabused applicant of that idea by
maintaining the requirement for information. In addition,
applicant did not even offer this meager information until
after the examining attorney had already issued a final
refusal with respect to applicant’s failure to comply with
the requirement for information.
Regarding website information, it is important that
the party actually print out the relevant information and
supply it to the examining attorney for several reasons.
First, applicant, by referring the examining attorney to
Ser. No. 76322156
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its website, acknowledges that there is relevant
information on its website. It is applicant’s
responsibility to provide the information to the examining
attorney. Websites often contain voluminous information
and links to other websites. A requirement for information
directs the applicant to provide information, not simply to
send the examining attorney on a scavenger hunt through a
website in search of relevant information.
In addition, as in this case, we simply have
applicant’s Internet address in the record. Information on
websites is transitory and subject to change at any time at
the owner’s discretion. It is not clear what applicant
intended when it directed the examining attorney to its
website without providing any specific information. If
applicant intended to put the relevant portions of the
website in the record, it is not clear what is in the
record. If applicant’s response were to be considered
sufficient, it would raise an issue as to what a reviewing
tribunal is allowed to consider. Would we be permitted to
consider any information on the website regardless of when
it was posted?
Finally, while we cast no aspersions on applicant’s
intentions in this case, we observe that applicant’s
response is fraught with potential for abuse. In effect,
Ser. No. 76322156
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an applicant can deflect the examining attorney from
information it has in its possession by simply referring
the examining attorney to its website. An applicant
controls its own website. To the extent that there is
information on the website that is harmful to its claim of
registrability, applicant has time to remove that
information before it responds to the examining attorney’s
requirement for information. Second, as discussed above,
websites are transitory, and it is not clear what
information is on the website at any given time. Accord
Babies Beat, 13 USPQ2d at 1731 (Ambiguous response offering
to provide requested information if the examining attorney
is “inclined to allow registration of the mark" not a
proper response).
Therefore, the examining attorney’s refusal to
register the mark because applicant has failed to comply
with her requirement for information is proper. We find
that the examining attorney’s requirement for information
in this case was reasonably necessary for the examination
of the application.3 See Page, 51 USPQ2d at 1665 (“[W]e
3 While we have affirmed the descriptiveness refusal without the
benefit of this evidence, the lack of this evidence, although a
hindrance, did not prevent the review of this case. Compare In
re DTI Partnership LLP, 67 USPQ2d 1699, 1702 (TTAB 2003) (“[O]ur
ability to fully and accurately access the substantive merits of
the mere descriptiveness issue has been hindered by applicant’s
failure to submit information and materials;” Section 2(e)(1)
Ser. No. 76322156
17
agree with the Examining Attorney that applicant's failure
to respond completely to the Examining Attorney's requests
for information required the 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”).
In summary, applicant’s mark GASBUYER is merely
descriptive of applicant’s services of providing on-line
risk management services in the field of pricing and
purchasing decisions for natural gas. Furthermore,
applicant has failed to comply with the examining
attorney’s requirement for information concerning its
services.
Decision: The refusals to register are affirmed.
refusal dismissed as moot) with SPX Corporation 63 USPQ2d at 1597
(Refusals based on descriptiveness and failure to comply with
examining attorney’s requirement for information affirmed).