Renkara Media Group

Trademark Trial and Appeal BoardMar 4, 2014

No. 85473807 (T.T.A.B. Mar. 4, 2014)

Mailed: March 4, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Renkara Media Group ________ Serial No. 85473807 _______ Laura McFarland-Taylor of McFarland-Taylor Associates, for Renkara Media Group. Michele-Lynn Swain, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Seeherman, Wellington, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Renkara Media Group (“applicant”) filed an application to register on the Principal Register the mark SCANCARDS1 in standard character format for “Software applications for mobile phones and other mobile communication devices, namely, software for organizing and managing projects and tasks that allows the user to enter project and task 1 Application No. 85473807, filed November 16, 2011, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 85473807 2 information directly into a mobile device or computer and store the information locally on the device or computer and in the network so that any data entered on one device or computer is automatically synced to all other devices and computers,” in International Class 9. The examining attorney has refused registration of the application under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that it is merely descriptive of the applied-for goods. The examining attorney also refused registration on the ground that applicant did not adequately respond to, or comply with, a request for information concerning its goods, pursuant to 37 C.F.R. § 2.61(b). When both of the refusals were made final, applicant filed an appeal. Applicant and the examining attorney each filed briefs, and applicant filed a reply brief. Upon careful consideration of the relevant arguments and evidence, we affirm both refusals to register. Requirement for Further Information In the first Office action, dated March 9, 2012, the examining attorney noted that further information about the goods was required for examination pursuant to 37 C.F.R. § 2.61(b). The examining attorney specifically stated: Serial No. 85473807 3 The requested product information should include fact sheets, instruction manuals and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods. Applicant responded on July 8, 2012 without any product information materials or an explanation that such materials are not available. Instead, applicant offered the following written response: Applicant’s software will not allow a user to scan various cards; it is simply software for organizing and managing projects and tasks. Applicant’s software will be in the form of a downloadable app for mobile phones and other mobile communication devices and will initially be available on iTunes for use on Apple products, such as the iPhone and iPad. The examining attorney referred to applicant’s July 8, 2012 written response in the August 2, 2012 Office Action, reiterated the requirement, and stated: The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade. Conclusory statements regarding the goods will not satisfy this requirement. Applicant did not further respond to the request. On November 15, 2012 it was made final, with the examining attorney again stating, among other things, “Applicant must Serial No. 85473807 4 state whether the software allows users to scan cards.” Applicant did not address the request for information in its appeal brief. In turn, the examining attorney noted on brief that the requested information “was necessary to permit proper examination of the application.” (EA’s brief at unnumbered 10 of 12). In its reply brief, applicant professes that it responded to the request for information adequately, and argues in its reply brief: Applicant’s response clearly answers the Examining Attorney’s request. Applicant has made abundantly clear that its goods do not ‘scan cards,’ stated its goods’ salient features, and stated its prospective customers and channels of trade. (reply brief at 4). In assessing the acceptability of the refusal, we consider whether the information required by the examining attorney was necessary for proper examination, and whether applicant provided information sufficient to comply with the requirement. See In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI Partnership LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP § 814 (Oct. 2013). We agree with the examining attorney that the requested information was necessary to permit proper examination. The information requested by the examining attorney, if provided by applicant, would have shed light on the nature of its goods and their intended use, and Serial No. 85473807 5 would have been helpful for the examining attorney to ascertain whether SCANCARDS is merely descriptive of applicant’s identified goods. Applicant’s statement that its goods do not scan cards is not sufficient to explain how applicant’s goods work, or what the salient characteristics of the goods are. For example, applicant’s “explanation” does not include a statement that its goods do not have a scanning function, or do not allow the scanning of information. Nor can it be determined from the very limited information provided by applicant whether the project and task information that the software allows the user to enter into a mobile device or computer is from what consumers might view as “cards.” We take judicial notice of the following relevant dictionary definitions2: Scan: 3a. to examine systematically . . . in order to obtain data especially for display or storage. b. to pass over in the formation of an image. Card: 6a. a flat stiff usually small and rectangular piece of material (as paper, cardboard, or plastic) usually bearing information: as (1) postcard (2) visiting card (3) business card (4) credit card . . . (6) one on which computer information is stored (as in the form of punched holes or magnetic encoding) (7) one bearing electronic circuit components for 2 Merriam-Webster’s Online Dictionary, www.m-w.com (2008). The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596, (TTAB 1982) aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85473807 6 insertion into a larger electronic device (as a computer). Applicant has not stated how its software may be used such that we could determine whether it may broadly be defined as a “scan” under the definitions set forth above. Applicant states in its appeal brief “The software, as stated in Applicant’s response to the Examining Attorney’s Office Actions, does not have the capability to ‘scan.’” (appl’s brief at 13), referring to the statement that “Applicant’s software will not allow a user to scan various cards.” However, we cannot know what capability it has without having received that information from applicant. For example, it is not clear from this statement whether applicant’s software has no scanning capability whatsoever, or whether it simply will not allow for the scanning of actual cards. Further, whatever capabilities applicant’s software may currently have, we must determine the issue of descriptiveness based on the software identified in the application, since any registration that might issue would give applicant the right to use its mark for that broad description of goods. Thus, the requested information, as applicant is certainly aware, may be quite relevant to the determination of whether or not the mark is merely descriptive. Serial No. 85473807 7 Accordingly, that applicant failed to comply constitutes a ground for refusal under 37 C.F.R. § 2.61(b). In view of applicant’s equivocal responses and failure to provide adequate information, we affirm on this ground. Section 2(e)(1) We next consider the refusal as to whether applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). Because applicant has inexcusably failed to comply with the information requirement, to the extent there is any ambiguity regarding whether applicant uses its applied-for mark to “scan” “cards,” we address the refusal based on the presumption that had applicant directly and fully responded to the examining attorney’s inquiries, the responses would have been unfavorable, i.e., that applicant’s identified goods have a scanning feature, and that the project and task information can be on or from what are regarded as cards. See; In re AOP LLC, 107 USPQ2d at 1651, citing In re Cheezswhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008). A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. See In re Chamber of Commerce of the U.S., 675 F.3d Serial No. 85473807 8 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012), citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987). 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 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. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the 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); See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). The examining attorney argues that the applied-for mark SCANCARDS describes a feature or function of applicant’s goods, namely that the software in the Serial No. 85473807 9 identification of goods is worded broadly enough to include applications that scan items including cards. The examining attorney also submitted evidence of third-party use of the terms “scan” and “cards” to indicate that software may be used to enter information from various types of cards, including business cards, ID cards, and credit cards, into a computer system. In general, the evidence shows how the information may be entered as a project for further management. Mobile Scanners – Scan Cards Directly Into File! Learn How! In the event that you’re starting to hunt for mobile scanners and you are not really sure which scanner to buy, we have a few suggestions. . . . In the case of id cards [sic], the scanner will separate the full card image, face image, signature image and full text data of the id and then sort it into useable files, which can then be exported to a clipboard or another software program. Attached to November 15, 2012 Office Action, p. 13. www.scannerbuzz.com. ScanBizCards Business Card Reader by ScanBiz Mobile Solutions L.P. The only business card reader offer BOTH the choice to scan cards in seconds right on your phone – or submit. Attached to November 15, 2012 Office Action, p. 10. https://itunes.apple.com. Web Sync is now at a point where you can use it as a standalone application to scan cards without having a mobile device! Attached to November 15, 2012 Office Action, p. 55. Blog.scanbizcards.com. Serial No. 85473807 10 Square: If you close sales on the road and need to accept credit card payments, then Square is the free Android app for you. You get a free credit card scanner that attaches to your Android device which enables you to scan cards, process payments, and email receipts instantly. Attached to November 15, 2012 Office Action, p. 75. Sproutsocial.com. Applicant argues that its applied-for mark is not merely descriptive of its goods because its goods do not “scan” cards. However, it is for us to determine whether consumers would understand applicant’s goods to perform a scanning function, and would understand the task and project information to be the equivalent of cards. Because applicant did not adequately respond to the information request, we must, as we previously stated, treat the answer to that question as against applicant’s interest. The identification of goods may be perceived as providing a scanning function of cards, or their equivalent. Accordingly, we have no doubt that a consumer would understand “SCANCARDS,” used in connection with applicant's goods, as directly conveying information about them, namely, that they are intended to enter information for goods, such as cards, onto a computer, for project management. See In re Tower Tech Inc., 64 USPQ2d at 1316- 17; see also In re Conductive Services, Inc., 220 USPQ 84, Serial No. 85473807 11 86 (TTAB 1983). Therefore, we find that the mark is merely descriptive of the identified goods, and we affirm this refusal to register. Decision: The refusals to register are affirmed, and registration to applicant is refused.