ZeroNines Technology, Inc.

Trademark Trial and Appeal Board

Jun 22, 2010

No. 77404271 (T.T.A.B. Jun. 22, 2010)

Mailed:
June 22, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ZeroNines Technology, Inc.
________

Serial No. 77404271
_______

Christopher M. Parent of Brownstein Hyatt Farber Schreck,
LLP for ZeroNines Technology, Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Bucher and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
ZeroNines Technology, Inc. seeks registration on the
Principal Register of the mark Always Available (in standard
character format) for services recited in the application as
“computer services, namely, creating indexes of information,
sites and other resources available on computer networks” in
International Class 42.1

1 Application Serial No. 77404271 was filed on February 22, 2008 based
upon applicant’s allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77404271
- 2 -
The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
In support of registrability, applicant argues that
the term “Always Available” is not merely descriptive of
the services recited in the application. Applicant claims
that the Trademark Examining Attorney’s arguments and
evidence are based alternatively on impermissibly broadened
or unjustifiably narrowed interpretations of the recited
services, while the Office’s arguments and evidence fail to
focus on the particular services involved in this application.
Applicant argues that the applied-for designation is, at
worst, suggestive, and therefore deserving of registration.
By contrast, the Trademark Examining Attorney
contends that this term conveys an immediate idea of a
significant feature of computer services in general, of
applicant’s services as recited, and of “cloud computing”
services, which the Trademark Examining Attorney contends is
an integral part of applicant’s computer services as
detailed herein.
Serial No. 77404271
- 3 -
Merely Descriptive under Section 2(e)(1)

A mark is merely descriptive, and therefore
unregistrable on the Principal Register pursuant to the
provisions of Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), if it immediately conveys “knowledge
of a quality, feature, function, or characteristic of the
goods or services.” In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) [ASPIRINA
is merely descriptive of analgesic product]. See also In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD are
merely descriptive of applicant’s “affinity” credit card
services; a “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service”]; In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) [THE ULTIMATE BIKE RACK is merely descriptive of
bicycle racks]; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987) [APPLE PIE is merely descriptive of a
potpourri mixture]; and In re Quik-Print Copy Shops, Inc.,
616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). To be “merely
descriptive,” a term need only describe a single significant
quality or property of the goods [or services]. Gyulay,
Serial No. 77404271
- 4 -
3 USPQ2d at 1009. Descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. That is, when we analyze the evidence of record, we
must keep in mind that the test is not whether prospective
purchasers can guess what applicant’s goods [or services]
are after seeing only applicant’s mark. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978) [GASBADGE merely descriptive of a “gas monitoring
badge”; “Appellant’s abstract test is deficient – not only
in denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. 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, 1316-1317 (TTAB 2002); and
In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
In addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, the proper test for descriptiveness also considers
the context in which the mark is used and the significance
that the mark is likely to have on the average purchaser
Serial No. 77404271
- 5 -
encountering the goods or services in the marketplace. In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if rather than immediately conveying
information about the goods or services, multiple steps of
reasoning are required to reach a conclusion as to the
nature of the goods or services. “Whether a given mark is
suggestive or merely descriptive depends on whether the mark
‘immediately conveys … knowledge of the ingredients,
qualities, or characteristics of the goods … with which it
is used,’ or whether ‘imagination, thought, or perception is
required to reach a conclusion on the nature of the goods.’”
(citation omitted) In re Gyulay, 3 USPQ2d at 1009; In re
Home Builders Association of Greenville, 18 USPQ2d 1313
(TTAB 1990); and In re American Greetings Corp., 226 USPQ
365 (TTAB 1985).
Hence, the ultimate question before us is whether the
term Always Available conveys information about a significant
feature of applicant’s services with the immediacy and
particularity required by the Trademark Act.
Serial No. 77404271
- 6 -
Analysis

The Trademark Examining Attorney has made of record
dictionary definitions as well as information drawn from the
Internet – reference drawn from periodicals, blogs and
proprietary websites of third parties and of applicant.
Merely descriptive as to computer services generally

The evidence the Trademark Examining Attorney placed
into the record as to the meaning of Always Available in
the context of computer services generally is criticized
by applicant as being impermissibly broad. The Trademark
Examining Attorney starts with dictionary definitions of
the individual words, “always” and “available.” She
contends that the word “always” means “at all times,”
that the word “available” means “accessible,” so that
“Always Available” clearly means “accessible at all
times.”
We find that these terms separately have a descriptive
significance in relation to applicant’s services. As noted
by the Trademark Examining Attorney, a term that merely
combines two descriptive words is not registrable if the
individual components retain their descriptive meaning in
relation to the services and the combination results in a
composite mark that is itself descriptive. See In re
Serial No. 77404271
- 7 -
King Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006)
[THE BREATHABLE MATTRESS merely descriptive of “beds,
mattresses, box springs and pillows”]; and In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) [GROUP
SALES BOX OFFICE merely descriptive of theater ticket sales
services]. Applicant argues that the applied-for term “is
not intended to imply that Applicant’s computer services are
‘always available’ to customers” but rather “that
Applicant’s technology safeguards key customer data.” This
is a curious argument, and one that we find most
unpersuasive. Rather, based upon the dictionary definitions
alone, we conclude that when these two descriptive terms –
“always” and “available” – are combined into Always Available,
as presented in the standard character drawing, the separate
meanings of the individual components are not lost.
Furthermore, we have no doubt but that the combined term,
Always Available, is merely descriptive when applied to
applicant’s recited services. That is to say, we find that
the term “Always Available” immediately describes a
significant characteristic of the named services. See In re
Abcor Development Corporation, 200 USPQ at 219 [J. Rich
concurring that “the present name of the [gas monitoring
badge] is GASBADGE”].
Serial No. 77404271
- 8 -
Yet throughout the prosecution of this application,
applicant has argued that its mark should be found non-
descriptive as were marks such as SUGAR & SPICE. Hence, the
question remains whether the newly coined combination of
descriptive components creates a unitary mark having a
unique, incongruous, or otherwise non-descriptive meaning
in relation to the services such that it renders the
combination registrable as a mark. For example, if a
combination of descriptive components has a readily
understood, alternative meaning, the mark would be
considered to have a double entendre and will not be refused
registration as merely descriptive if one of its meanings is
not merely descriptive in relation to the services. See The
Institut National des Appellations D'Origine v. Vintners
International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190 (Fed.
Cir. 1992) [CHABLIS WITH A TWIST may well project a double
meaning, e.g., the unusual approach of adding a citrus
flavoring to wine]; In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382, 384 (CCPA 1968) [the term SUGAR & SPICE
held not to be merely descriptive of bakery products]2 and

2 In this oft-cited decision of the predecessor to our principal
reviewing court, the Court found this matter clearly functioned as a
trademark because “sugar and spice” is a well-known phrase taken from a
nursery rhyme. The composite mark is inherently distinctive as applied to
bakery products – even ones containing these two ingredients – precisely
Serial No. 77404271
- 9 -
In re National Tea Co., 144 USPQ 286 (TTAB 1965) [NO BONES
ABOUT IT for fresh pre-cooked ham]. In addition to the
straightforward and merely descriptive meaning, the combined
term in each of these cases creates a second meaning or
interpretation that members of the public would make quite
readily, thereby rendering the combination registrable as a
mark.
Applicant has not explained exactly what the readily
understood but non-descriptive interpretation of consumers
would be, and hence this term stands in sharp contrast to
the very clear secondary interpretations that were present
in double entendre marks such as CHABLIS WITH A TWIST, SUGAR &
SPICE or NO BONES ABOUT IT referred to above.
In addition to dictionary definitions, the Trademark
Examining Attorney has shown that in the computer field
generally, the combined term means that the software
solutions or online computer services are available through
computer networks that are accessible at all times,
allowing the customer uninterrupted access to its
applications and data:
Online Library Services allows you to access
and manage your own geo-spatial data online
through Spot Online Access. We are hosting

because this combination from the nursery rhyme is familiar to anyone
seeing or hearing this mark.
Serial No. 77404271
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and managing the data on our end. Available
24/7, your data are always available for
you to access.3

-o0o-

Access 2007 & SharePoint: The control room
operators keep the log database on the
C:\drive of the control-room computer. They
have resisted migrating to a SQL Server
solution because they feel the Access
database is “always available,” even in case
of any kind of network issue or larger
emergency.
Network interruptions are infrequent, but
they certainly happen more than hard-drive
crashes. The C:\drive is not backed up,
however, so I’m not comfortable with the
solution ….4

-o0o-

Skoot is always available. Access your
files online, anytime, anywhere with Web
Skoot.5

-o0o-

AlertSite is a leading provider of Web
performance management solutions that ensure
a customer’s Web-based services and
applications are always available and
running at peak performance. More than
2,300 customers worldwide rely on AlertSite
to understand and enhance the end-user ….6

-o0o-

3 http://access.spot.com/FAQ.html

4 http://www.tech-archive.net/Archive/SharePoint/microsoft.
public.sharepoint.windowsservices/2007-02/msg00232.html

5 http://www.skootit.com/page.aspx?nid=22
6 INTERNET WEEKLY NEWS, January 5, 2009.

Serial No. 77404271
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To ensure its online collaboration services
are always available and performing without
compromise, Box.net selected A10’s AX
Series for the exceptional price/performance
leadership.7

(emphasis in office copies submitted by the Trademark
Examining Attorney)
Based on this type of evidence, we agree with the
contention of the Trademark Examining Attorney that the term
“always available” is used routinely to describe computer
services always accessible to the user, and hence,
immediately conveys information about a significant and
valued feature of many types of computer services.
Merely descriptive as to applicant’s recited services

In the context of applicant’s recited computer
services, we are persuaded by the evidence of record that
the term Always Available will immediately convey information
to potential consumers about a significant feature of
applicant’s services. Specifically, we find that applicant
itself touts the uninterrupted access its customers will
enjoy at all times. We see no reason the average computer
user would perceive any novel, incongruous or non-
descriptive meaning for the combination of these two words.

7 LAB BUSINESS WEEK, February 22, 2009.
Serial No. 77404271
- 12 -
The Trademark Examining Attorney focuses on applicant’s
recited services: “computer services, namely, creating
indexes of information, sites and other resources available
on computer networks.” She then refers to specific
information in the record drawn from applicant’s own
website:
Always Available technology and services
protect against catastrophic downtime,
providing continuous access to company data,
applications and transactions …. Applicant’s
services also provide consumers with secure
Always Available access to their personal
email, remote storage data vault and remote
medical storage data vault.8

If one application server, data center, or
cloud suffers from a disaster, all
activities continue uninterrupted on the
others.9

Companies large and small value uninterrupted access
to critical data in spite of the reality of server crashes
or network problems, whether small emergencies or
catastrophic events. The Trademark Examining Attorney
argues that it is clear from applicant’s own recitation
of services, as described further on its website, that a
major selling point of applicant’s services is that its
customers are provided seamless functionality despite any

8 See http://www.zeronines.com attached to the Office action of
October 15, 2009.

9 See Exhibit A attached to Applicant’s Response of September
17, 2009
Serial No. 77404271
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kind of disaster. That is, applicant’s cloud computing,
physical hosting at great distances, and multisychronization
guarantees that the user has continuous access to its
applications and data. Applicant’s website refers to
Always Available as its “motto,” and a motto ostensibly
understandable to its customers without reliance on
“imagination, thought or perception.”
Merely descriptive as to fail-safe network services

Finally, the Trademark Examining Attorney makes the
case that the term “always available” is already being used
descriptively by a variety of third parties offering
competing versions of business continuity technology, and
especially service providers offering fail-safe network
architectures that involves multi-casting, cloud computing,
an SaaSGrid, etc.
However, in its reply brief, applicant summarily
dismissed this extensive third-party usage as follows:
The Examining Attorney’s arguments concerning
the use of the term “Always Available” in
connection with cloud computing services
likewise are unhelpful because cloud
computing services are not identified in
Applicant’s services description.

While it is true that applicant’s recitation of
services [“computer services, namely, creating indexes of
information, sites and other resources available on computer
Serial No. 77404271
- 14 -
networks”] does not specifically make reference to “cloud
computing,” we find the Trademark Examining Attorney’s
evidence in this regard to be most helpful.
While “cloud computing” is a relatively new and
rapidly evolving technology, the Trademark Examining
Attorney has placed into the record definitions and blogs
offering a basic primer on this emerging combination of
software, infrastructure and services:

DEFINITION: Cloud computing is a general term for anything that involves
delivering hosted services over the Internet. … The name cloud computing was
inspired by the cloud symbol that's often used to represent the Internet in
flowcharts and diagrams.
A cloud service has three distinct characteristics that differentiate it from
traditional hosting. It is sold on demand, typically by the minute or the hour; it is
elastic -- a user can have as much or as little of a service as they want at any given
time; and the service is fully managed by the provider (the consumer needs
nothing but a personal computer and Internet access). Significant innovations in
virtualization and distributed computing, as well as improved access to high-speed
Internet and a weak economy, have accelerated interest in cloud computing… 10

CLOUD COMPUTING: Heads in the cloud
Having your content in the cloud means it’s always available through a variety
of access methods… 11

10 http://searchcloudcomputing.techtarget.com/sDefinition/0,,sid201
_gci1287881,00.html

11 NEW MEDIA AGE, June 18, 2009, at 26.

Serial No. 77404271
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Some Notes on Defining Cloud Computing
There seems to be some key attributes that describe cloud computing. … Some key attributes
that apply to cloud computing based on the industry’s use Circa 2007:
*Certainly Internet-based and very network centric …
*A Level of Infrastructure (or device) abstraction, which in itself is can be part of the
service provided …
*A Level of management automation …
*Some level of data abstraction in which the data you need is always available but its
available everywhere …
In terms of general usage of the term "cloud computing" it seems that only one thing is
common -- its network centric with some level of automation that can provision
resources or services automatically…
So it would seem that cloud computing is defined uniquely as the combination of management
abstraction/automation + network-centric data-centric applications. In fact, the focus is
squarely on the data (and its control [Application Programming Interfaces]) and very little else.
12

Cloud Computing for Larger Companies – The Hybrid Approach
September 10, 2009
…
2. Large Departmental Applications – Again, put them in the Cloud. Deal with them
as if they were Enterprise Applications and your users will love you. Always
available from anywhere, always up, delivered in a thin client method so that they
can run when as where needed. Cost effective and rock solid. Perfect! 13

2009 HORIZON REPORT: THE K12 EDITION
Two to Three Years: Cloud Computing
There are cloud-based counterparts to many common software tools from email to word
processing and spreadsheets. … To the end user the cloud is invisible, and the technology
that supports the application does not matter – the fact that the applications are always
available is key.” 14

12 http://blogs.sun.com/jasoncatsun/entry/some_notes_on_defining_cloud

13 http://ivdesk.wordpress.com/2009/09/10/cloud-computing-for-
companies-over-200million-the-hybrid-approach/

14 http://wp.nmc.org/horizon-k12-2009/chapters/two-to-three-years-
cloud-computing/

Serial No. 77404271
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The Cloud With A Silver Lining…
… My point, all the necessary precautions have been taken by those that supply
Cloud based services – to ensure there systems are properly protected, and always
available. 15

Cloud network-attached storage (NAS) emerges to address
secondary file storage needs
What are the benefits of cloud NAS?
Well, with a typical NAS device, you are stuck with that location. So if
something goes wrong with that location, your services are going to be
down. So, if you have a critical file serving requirement, and if you are out
somewhere traveling and need to access it, but the router in your office went
down, you are out of luck. But, if you move it into the cloud it is virtually
available and always available. The key benefit is that you can access
your information at any time without the restrictions of the physical location
of the data. 16

On the other hand, there are several important attributes that make various forms of cloud computing
potentially attractive.

Things like the dynamic nature of most cloud
computing architectures -- there's no need
to pre-provision maximum-case capacity
(server, storage and network) on a per-
application.
Applications use exactly what they need --
when they need it -- and no ore -- out of a
giant pool of resources.
As a result, this behavior was one of the
things that made cloud architectures
extremely efficient at what they did -- in
addition to doing them at great scale.
Resources in a cloud are always available
on-demand -- whether to provision a new
application, or to bump up performance if
needed. And when the application doesn't need quite so much, the resources are returned to the pool for
others to use.
17

15 http://enterprisesolutionsblog.shavlik.com/2009/10/07/the-cloud-
with-a-silver-lining%E2%80%A6/

16 http://searchsmbstorage.techtarget.com/generic/0,295582,sid188
_gci1364787,00.html#q2

17 http://chucksblog.emc.com/chucks_blog/2009/03/emc-2009-strategic-
forum-private-cloud.html
Serial No. 77404271
- 17 -
However, applicant’s own blog demonstrates the use of
“always available” in the ordinary sense of these words as
meaning “virtually 100% availability” – not as a source
indicator. Rather, we are convinced by applicant’s own web
pages that applicant’s recited services provided under the
designation “Always Available,” by providing synchronous
identical processing on multiple cloud nodes geographically
separated by thousands of miles, does indeed rely upon cloud
computing technologies:
September 15, 2008
Cloud Failure: The Myth of Nines
Visit Reuven Cohen's blog

• For about as long as there have been computer networks, administrators have
attempted to keep these networks up and running. It seems to be a continuous battle
between faulty hardware, poorly written software, unreliable connectivity and random
acts of God. With the emergence of cloud computing we are now for the first time
close to realizing a computing environment where we are able to focus less on
keeping our applications up and more on making them run more efficiently and
effectively….
• In a recent conversation with Alan Gin founder of a super secret stealth firm called
ZeroNines, Alan described an interesting philosophy. He said the problem with most
disaster recovery plans is the recovery is reactive, it is what happens after a disaster
has already harmed your business. He said on its face, this is an unsound strategy…
• To be competitive in today's always connected, always available world. We need to
reinvent the fundamental idea of disaster recovery. One of the major benefits to
using cloud computing is that you can make these types of failover assumptions well
before they happen using an emerging global toolset of cloud components. It's not a
matter of if, but a matter of when, when you take into consideration that application
components will fail then you can build an application that features "failure as
service.” One that is always available, one with Zero Nines. 18

18 http://zeronines.blogspot.com/2008/09/cloud-failure-myth-of-
nines.html, attached to the Office action of October 15, 2009.

Serial No. 77404271
- 18 -
Benefits of the ZeroNines®
Always Available™ Technology
• Protects against interruptions and outages of any kind, with no need for recovery.
• Ensures virtually 100% availability of mission critical information, data, applications and
transactions.
• Integrates seamlessly with your existing infrastructure, virtualized environments and clouds.
• Cuts costs for disaster recovery systems that leave you vulnerable.
• Helps you comply with strict federal compliance standards, including Sarbanes-Oxley and
HIPAA.
• Safeguards your business and its reputation, regardless of its size or complexity. 19

Finally, we find it somewhat disingenuous that in spite
of the many third party uses of the term “always available”
cited by the Trademark Examining Attorney, that applicant
continues to argue that there is no showing that competitors
need to use the term “Always Available” to market their
products:
Our Joomla Applications
What does it mean to you?
Running a Joomla application in the cloud provides many benefits that are not
possible to achieve with traditional infrastructure and hosting, such as:
High Availability.
Building highly available applications has always been difficult. AppLogic provides
affordable high-availability to all applications. In the AppLogic cloud, all storage is
mirrored. Should a server fail, all data remains available and affected application
components are restarted automatically for you. This way you can be sure your
customers do not lose data and your service is always available. 20

19 Applicant’s marketing brochure attached to the applicant’s response
of September 17, 2009, Exhibit A, first page.

20 http://www.cloudaccess.net/joomla-cloud-hosting-
solution.html

Serial No. 77404271
- 19 -
Apprenda’s SaaSGrid Cloud Application Server Announced as the First Technology
Available via PEER 1's High-Performance Infrastructure
June 25, 2009
…PEER 1 ensures customers’ online presence is always fast, always available… 21

Egnyte Local Cloud is an always available local cache of files from the
On Demand File Server… 22

VMware vows to overhaul data center with “cloud
operating system”
Aggregation of data center resources highlights new VMware virtualization platform
By Jon Brodkin, NETWORK WORLD, April 21, 2009

VMware has unveiled VSphere, the long awaited overhaul of its core
virtualization platform which is designed to aggregate the virtual resources in
the data center into one centrally managed computing pool…
Bogomil Balkansky, VMware's vice president of product marketing, says the
goal of the cloud operating system is to turn IT into a pay-as-you-go service
that is always available through a Web portal. VSphere aggregates all the
virtualized x86 components of the data center and gives the IT administrator
greater control over service levels, he says. "Our role is to enable customers
to build their own internal clouds," he says. 23

Computer Technology Journal
SOONR: New Soonr 3.0 Integrates the iPhone, Netbook, PC and Mac with
Break-through Productivity in the Cloud
May 14th, 2009
… Whenever your computer is online, Soonr automatically and instantly backs
up your files in your personal cloud with full version control, making them
always available from anywhere….24

21 http://apprenda.com/news-and-updates/press-releases/apprenda-s-
saasgrid-cloud-application-server-announced-as-the-first-technology-
available-via-peer-1-s-high-performance-infrastructure/

22 www.egnyte.com/corp/local_drive.html

23 http://www.networkworld.com/news/2009/042109-vmware-vsphere.html

24 COMPUTER TECHNOLOGY JOURNAL, May 14, 2009, at 271.

Serial No. 77404271
- 20 -
ENTERPRISE CLOUD
ARCHITECTURE
BUILT TO PERFORM
…
ALWAYS AVAILABLE
The grid architecture of The Enterprise Cloud provides complete physical
redundancy to eliminate downtime due to hardware failure. In fact, the
system can even move applications across physical devices live and with no
service interruption… 25

Soonr Brings Mobile Cloud Computing to the iPhone
Just as today's mobile phones let you send and receive emails while on the go, Soonr
now makes the documents on your Mac or PC completely mobile. Whenever your
computer is online, Soonr automatically and instantly backs up your files in your "personal
cloud," making them always available to you…. 26

Applicant has made two other types of arguments for
registrability. Applicant has introduced into the record
more than two dozen third party registrations, which it
argues demonstrate that the U.S. Patent and Trademark Office
routinely finds composite marks beginning with the word
“ALWAYS _____ ” to be suggestive rather than merely
descriptive. We have reproduced a representative sampling
of those closest to the instant application:
ALWAYS PAYS for “dissemination of advertising
of the goods and services of
others via a global computer
network” in Int. Class 35;27

25 http://www.theenterprisecloud.com/; http://www.terremark.com/

26 http://www.soonr.com/release15.php

27 Registration No. 2780831 issued on November 4, 2003; Section 8
affidavit (six-year) accepted and Section 15 affidavit acknowledged.

Serial No. 77404271
- 21 -
ALWAYS LISTENING for “microphones, microphone
cables, microphone mounts and
stands, microphone receivers and
transmitters, microphone power
supplies, headphones, phonograph
cartridges and styli, audio mixers
and record turntables” in
International Class 9;28
ALWAYS AVAILABLE
HARDWARE
for “providing appliance hardware
replacement services, namely,
technical monitoring of computer
hardware for failure” in
International Class 42;29
ALWAYS UNDERSTANDING for “computer software and
computer software development
tools for natural language
recognition …” in Int. Class 9;30

for “broadcasting programs via a
global computer network; radio
broadcasting” in Int. Class 38;31
Always On for “public utility services in
the field of electric energy” in
International Class 39;32

The totality of applicant’s evidence of third-party
registrations having marks that include as the leading word,
“Always,” is not persuasive of a different result herein.
The fact that other, very different marks may contain the
term “Always” for different goods and/or services does

28 Registration No. 3184378 issued on December 12, 2006.

29 Registration No. 3390442 issued on February 26, 2008. No claim is
made to the exclusive right to the word “Hardware” apart from the mark as
shown.

30 Registration No. 3424023 issued on May 6, 2008.

31 Registration No. 3447016 issued on June 10, 2008.

32 Registration No. 3527553 issued on November 4, 2008.

Serial No. 77404271
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not address whether “always available” is merely
descriptive within the context of applicant’s computer
services. For example, we are not privy to the files in
these third-party registrations, but there are certainly
quick ways of distinguishing specific registrations:
ALWAYS PAYS – combined term does not bear the same link to
advertising as does applicant’s term in relation to computer
services; ALWAYS LISTENING – no way of knowing if other
merchants of audio transmission equipment used this term;
ALWAYS AVAILABLE HARDWARE – appears to be advertising
puffery inasmuch as there is no expectation that hardware
replacement services are held to a 99.99% availability
standard; ALWAYS UNDERSTANDING – no way of knowing if other
merchants of language recognition software used this term;
ALWAYS AGGRESSIVE, ALWAYS PROGRESSIVE – rhyming cadence and
indefinite connotation as to broadcasts; and ALWAYS ON – for
an electric utility, this is a word play on being
“electrified/hot” and being “engaged/turned on.” The
contrast with these listed mark from the instant case is
even greater in light of applicant’s boast that its service
“[e]nsures virtually 100% availability of mission critical
information, data, applications and transactions.”
Each case must be decided on its own facts, and a term
that is merely descriptive, such as the one at issue herein,
Serial No. 77404271
- 23 -
should not be registered on the Principal Register simply
because similar marks appear on the register. In re
Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
In any event, while the Office values consistency, we are
not bound by the prior actions of individual Trademark
Examining Attorneys. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the board or this court.”].
Finally, we observe that the fact applicant disagrees
with the Trademark Examining Attorney’s refusal of mere
descriptiveness does not, as applicant argues, “bolster[] a
conclusion that the Mark is suggestive” inasmuch as this
would describe virtually every Final refusal under Section
2(e)(1) of the Lanham Act that is appealed to this Board.
Decision: The Trademark Examining Attorney’s refusal
to register under Section 2(e)(1) of the Act the term Always
Available in connection with “computer services, namely,
creating indexes of information, sites and other resources
available on computer networks” is hereby affirmed.