TBT Int'l., Inc.

Trademark Trial and Appeal Board

Oct 29, 1999

No. 75092630 (T.T.A.B. Oct. 29, 1999)

Paper No. 17
LKM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 29,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re TBT International, Inc.
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Serial No. 75/092,630
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Hugh D. Jaeger of Hugh D. Jaeger, P.A. for applicant.
Asmat A. Khan, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Quinn and McLeod, Administrative Trademark
Judges.
Opinion by McLeod, Administrative Trademark Judge:
An application has been filed by TBT International, Inc.
to register the designation shown below for “computer services,
Ser No. 75/092630
2
namely, leasing access time to a computer database offering, in
real time, elementary, junior and senior high school
educational materials and offering a live, interactive
experience over a global computer network.”1
The Trademark Examining Attorney has refused registration
under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s designation, when applied to
applicant’s services, is merely descriptive.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was originally requested, but the request was
later withdrawn by applicant.
Applicant argues that the mark is suggestive, and that it
does not immediately convey to the relevant public the extent
of services or variety of materials offered by applicant.
Applicant acknowledges that “online” and “class” may be
commonly used industry terms. However, applicant contends that
the combination of the two words into one word -- ONLINECLASS -
– creates an unusual and distinctive mark. Applicant
maintains, among other things, that the unitary designation is
suggestive because the term “class” has several definitions,

1 Application Serial No. 75/092,630, filed April 15, 1996, alleging
dates of first use of March 1, 1996.
Ser No. 75/092630
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and it is not used by any other company to identify online
educational goods or services.
The Examining Attorney argues, on the other hand, that the
applied-for mark is merely descriptive of applicant’s services.
According to the Examining Attorney, the mark immediately
conveys to consumers that class instruction is offered on a
global computer network. The Examining Attorney maintains that
the combination of two descriptive words “online” and “class”
into a unitary designation creates no incongruity. Moreover,
the Examining Attorney submits that the mark need not describe
all characteristics, features or details of applicant’s
services in order to be found merely descriptive. In support
of the refusal to register, the Examining Attorney submitted
dictionary definitions for the terms “online” and “class.”
Before turning to the substantive issue before us, we must
address a procedural issue. For the first time in its brief,
applicant has asserted an alternative basis for registration.
Specifically, applicant argues, in the alternative, that the
mark ONLINECLASS has acquired distinctiveness. The Examining
Attorney objected to the consideration of this issue on appeal.
We agree that applicant’s assertion of acquired
distinctiveness in its brief is untimely. Trademark Rule
2.142(d) provides that the record in the application should be
complete prior to the filing of an appeal and that if applicant
Ser No. 75/092630
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wishes to introduce additional evidence after an appeal is
filed, it may file a request for remand. See TBMP § 1207.
Applicant did not file a request for remand nor has it offered
any reason why it failed to raise this issue prior to filing
the appeal. Accordingly, applicant’s claim of acquired
distinctiveness has been given no consideration.
Turning to the merits of the refusal, a term is merely
descriptive of services, within the meaning of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately
describes a quality, characteristic or feature thereof or if it
directly conveys information regarding the nature, function,
purpose or use of the services. In re Quik-Print Copy Shops,
Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980), citing In re
Abcor Development Corp., 588 F.2d 811, 813-14, 200 USPQ 215,
217-18 (CCPA 1978). It is not necessary that a term describe
all of the properties or functions of the services in order for
it to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant attribute
or idea about them. In re Gyulay, 820 F.2d 1216, 1218, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987). Furthermore, whether a
term is merely descriptive is determined not in the abstract
but in relation to the services for which registration is
sought. Abcor Development, 588 F.2d at 814, 200 USPQ at 218;
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Ser No. 75/092630
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The evidence of record persuades us that, when used in
connection with the identified services, the combined
designation “OnlineClass” immediately conveys that educational
class instruction and materials are offered to students via a
global computer network. As noted by the Examining Attorney,
the term “online” is defined as “activated and ready for
operation; capable of communicating with or being controlled by
computer. For example . . . a database is online when it can
be used by a person who connects with the computer on which it
is stored.” Microsoft Press Computer Dictionary 246 (1991).
The term “class” is defined as “a group of students studying
the same subject,” Webster’s II New Revised University
Dictionary 268 (1994), and “a course of instruction.”
Webster’s Third New International Dictionary 416 (1971).2
Applicant acknowledges that “online” and “class” are
commonly used industry terms. In fact, applicant uses the
terms descriptively in its own literature to refer to its
services:
Welcome to TBT International’s OnlineClass Home
Room, where you’ll find original Internet
programming for the K-12 classroom. (emphasis
added).

2 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
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Add e-mail addresses at $25 ea. for multiple
classes or team-teaching settings. (emphasis
added).
OnlineClass programs we offer for Winter and
Spring, 1997: . . . Mythos: Zeus Speaks! The
history of Ancient Greece and the inhabitants
of Mount Olympus come alive as students receive e-
mail versions of the basic Greek myths and discuss
online their reactions to the stories. (emphasis
added).
[O]nline field reports from Rivers of Life staff
and guests such as river managers, barge pilots,
biologists, poets, musicians, historians,
archaeologists and lock and dam operators and e-
mail Q & A. (emphasis added).
We reject applicant’s contention that the combined terms
form an unusual, distinctive and registrable mark. Whether a
term which is created by combining two or more descriptive
words may achieve registration depends on whether, in
combination, a new and different commercial impression is
created and/or the combination imparts an incongruous meaning
as used with the goods or services. See In re National
Shooting Sports Foundation, 219 USPQ 1018 (TTAB 1983) and cases
cited therein.
In this case, applicant has done nothing more than combine
two words which describe significant features of applicant’s
services. The term “online” describes the mode through which
applicant offers its services. Further, the term “class”
describes the nature of applicant’s services. See In re Putman
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Publishing Co., 39 USPQ2d 2021 (TTAB 1996)(FOOD & BEVERAGE ON-
LINE merely descriptive for news and information service
updated daily for the food processing industry, contained in a
database). There is nothing unique or incongruous about the
combined designation “OnlineClass,” and no imagination is
required to understand the nature of applicant’s services.
In this regard, the present situation differs from the
cases relied upon by applicant in which two admittedly
descriptive terms, when combined, were found to result in a
composite which was not merely descriptive. See Dial-A-
Mattress Operating Corp. v. Mattress Madness, 841 F.Supp. 1339,
33 USPQ2d 1961 (E.D.N.Y. 1994); Regal Indus. v. General Strap,
33 USPQ2d 1289 (E.D. Pa. 1994). We believe that this case
falls in a line of cases where two descriptive terms, when
combined, remain merely descriptive. See e.g. In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987)(SCREENWIPE for a premoistened, antistatic cloth for
cleaning computer and television screens not registrable); In
re United States Steel Corp., 225 USPQ 750, 751 (TTAB
1985)(SUPEROPE no less descriptive than SUPER ROPE); In re Wink
Corporation, 218 USPQ 739 (TTAB 1983)(FULLVIEW merely
descriptive of vehicle rear view mirrors); In re Orleans Wines,
Ltd., 196 USPQ 516 (TTAB 1977)(BREADSPRED merely descriptive of
jellies and jams); In re The Perkin-Elmer Corp., 174 USPQ 57
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(TTAB 1972)(LASERGAGE merely descriptive of interferometers);
In re Hycon Mfg. Company, 169 USPQ 622 (TTAB 1971)(HYCONTRAST
merely descriptive of ambient light filters and image
enhancers).
Finally, the fact that the term “class” is broad and may
encompass other meanings or that the combination does not
describe every feature of applicant’s services is not
persuasive of a different result. See In re Acuson, 225 USPQ
790 (TTAB 1985). Also, the fact that applicant may be the
first or only user of the designation is not dispositive. In
re Eden Foods Inc., 24 USPQ2d 1757, 1761 (TTAB 1992), citing
National Shooting Sports, supra.
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. J. Quinn
L. K. McLeod
Administrative Trademark
Judges, Trademark
Trial and Appeal Board
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