Savin Corp.

Trademark Trial and Appeal Board

May 7, 2002

No. 75565398 (T.T.A.B. May. 7, 2002)

Oral Hearing: Paper No. 19
February 19, 2002 GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Savin Corporation
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Serial No. 75/565,398
_______
David A. Einhorn and James M. Andriola of Anderson Kill & Olick,
P.C. for Savin Corporation.
Ronald E. Aikens, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Quinn, Hohein and Botorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Savin Corporation has filed an application to register
the mark "SAVIN NET" for "computer software system for processing
parts and supplies orders via a real-time on-line system, namely
software generating a graphical user interface that is
downloadable by customers for use in communicating with the
vendor" in International Class 9 and "computerized on-line
ordering services in the field of office machinery and equipment"
in International Class 35.1
1 Ser. No. 75/565,398, filed on October 7, 1998, based upon an
allegation of a bona fide intention to use such mark in commerce. By
an amendment to allege use, received on February 23, 2001, the
application was amended to claim a date of first use anywhere and in
commerce of October 1, 1998 for both the goods and the services.
Ser. No. 75/565,398
2
Registration has been finally refused under Section
6(a) of the Trademark Act, 15 U.S.C. §1056(a), on the basis of
applicant's refusal to comply with a requirement for a disclaimer
of the term "NET," which the Examining Attorney maintains means
"network" and as such is merely descriptive of applicant's goods
and services within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1).
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the disclaimer requirement.
Applicant contends that the term "NET" is not merely
descriptive of its goods and services and thus does not
constitute an unregistrable component of its "SAVIN NET" mark
which must be disclaimed. By way of background, applicant
asserts in its initial brief that it "sells its products and
services through 17 company-owned branches and over 750 trained
dealers throughout the United States." Although admitting, in
such brief, that its description of goods and services in the
present application "describes a real-time on-line system that
uses modems and telephone lines" for placing parts and supplies
orders, applicant insists that "that system is different from
other global computer networks." Consequently, applicant urges
that its "SAVIN NET" mark, "in referring to a computer system
that links computers through modems and telephone lines[,] does
not refer to a global computer network." In addition, applicant
argues that its mark "refers to services involving a real-time
on-line connection only between Applicant and Applicant's
Ser. No. 75/565,398
3
customers" and thus such mark "does not refer to the Internet or
any other global computer network."
Furthermore, according to applicant's initial brief:
Not only is the Examiner inaccurate when
he holds that the word "NET" as used by
Applicant is descriptive of a "network of
computers," the Examiner also fails to
address the suggestive quality of the mark
SAVIN NET as applied to the goods and
services identified in the application. The
goods and services offered under this mark
are designed to provide authorized Savin
dealers, as well as Savin customers, a means
of quickly replacing parts when they fail.
In this sense, SAVIN NET has a strong
suggestive quality in that it implies a
"safety net" for Savin's customers. ....
Applicant also contends, in such brief, that "[e]ven if the term
'NET' as used herein is held to be merely descriptive, the merely
descriptive significance of the term 'NET' is lost in the mark as
a whole" because "[t]he proximity of the two 'N's in SAVIN NET
give it a 'cadence which encourages persons encountering it to
perceive it as a whole,'" citing In re Kraft, Inc., 218 USPQ 571,
573 (TTAB 1983) [disclaimer of "LIGHT" not required for mark
"LIGHT N' LIVELY" for reduced calorie mayonnaise]. Additionally,
in its supplemental brief, applicant asserts that its "SAVIN NET"
mark is suggestive because it "sounds like 'SAVIN(G) IT'" and, in
such sense, "it conveys to the customer that there are good deals
to be found on-line for Savin equipment."
Finally, applicant submits in its initial brief that a
disclaimer of the term "NET" is inappropriate because, as
evidenced by the copies which it has made of record, none of the
nine third-party registrations for marks which include such term
Ser. No. 75/565,398
4
for goods and/or services which are explicitly recited as
involving a "computer network" contains a disclaimer of the term
"NET." Fairness, applicant maintains, dictates that inasmuch as
"the Trademark Office has permitted registration of the term
'NET' without a disclaimer when the description of goods [and/or
services] actually contains the terms 'computer network,' the
present application, which does not contain the terms 'computer
network,' should surely be allowed without a disclaimer."
The Examining Attorney, on the other hand, contends
that the term "NET" in applicant's "SAVIN NET" mark "is merely
descriptive of applicant's goods and services because it
"immediately conveys how the Applicant's goods work and precisely
what is being offered by and through the Applicant's goods and
services and, therefore, clearly describes a significant
characteristic and feature, as well as the function and purpose,
of the relevant goods or services." Consequently, and since the
Examining Attorney also finds that such mark is not unitary, the
Examining Attorney maintains that applicant's mark "is not
registrable on the Principal Register without a disclaimer of the
descriptive wording."
Specifically, the Examining Attorney argues that "the
word 'NET,' used in relation to goods and services for use in
real-time, on-line communications with vendors, immediately would
convey to the purchaser the information that the Applicant's
goods create a computer or telecommunications network and connect
the user to that same computer or telecommunications network."
In support thereof, the Examining Attorney has made of record
Ser. No. 75/565,398
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from various dictionaries, encyclopedias and websites definitions
of the terms "net" and "network," including the following:
"net," which is set forth as meaning:
(i) "A network; for example, a network of
computers connected to each other" by the
High Tech Dictionary; (ii) "Abbreviation of
network. 'The Net' generally refers to the
Internet" in the Tech Encyclopedia; and (iii)
"Computer Science. See network" by The
American Heritage Dictionary of the English
Language (3d ed. 1992); and
"network," which is defined as: (i)
"(1) A system that transmits any combination
of voice, video and/or data between users" in
the Tech Encyclopedia; (ii) "A group of two
or more computer systems linked together.
There are many types of computer networks
including ... wide area networks (WANs): The
computers are farther apart [than local area
networks] and are connected by telephone
lines or radio waves" by Webopedia; (iii )
"Two or more computers that are connected.
The most common types of networks are: ...
WAN - wide area network: The computers are
at different geographical locations and are
connected by telephone lines or radio waves"
in NetLingo; and (iv) "4. ... b. Computer
Science. A system of computers
interconnected by telephone wires or other
means in order to share information. Also
called net" by The American Heritage
Dictionary of the English Language (3d ed.
1992).
Also of record, from The American Heritage Dictionary of the
English Language (3d ed. 1992), is a definition of the term "on-
line," which appears in the identification of applicant's goods
and the recitation of its services, as meaning "1. Computer
Science. .... b. Connected to a computer network. c.
Accessible via a computer or computer network: an on-line
database."
Ser. No. 75/565,398
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With respect to applicant's contention that the term
"NET" in its mark refers to the use of its goods and services to
place parts and supplies orders via a modem over telephone lines
rather than a global computer network, the Examining Attorney
notes that the brochure which applicant made of record concerning
its goods and services, entitled "Put Your Processing On-line
With ............ Savin Net," clearly states that "Savin Net is
an ON-LINE processing system" which is designed to allow users to
"[c]ommunicate with ANYONE in the Savin Net network through the
E-MAIL function" and to "[s]hare information with other dealers
and communicate directly with your Savin Dealer Regional Office."
Thus, while not disputing applicant's assertion that the term
"NET" in its mark refers to the placement of orders on-line via a
modem over telephone lines and not through a global computer
network such as the Internet, the Examining Attorney "contends
that the Applicant's own use of the word 'NET' falls within the
scope of the ... definitions of the words 'NET' and 'NETWORK'
...." Accordingly, the Examining Attorney concludes that:
The plain meaning of the word "NET," in
the context of the Applicant's goods and
services[,] is "NETWORK." The word "Network"
is [merely] descriptive of a system of
computers interconnected by telephone wires
or other means--a system that transmits any
combination of voice, video, and/or data
between users--in order to share information.
The addition of the word "SAVIN" in front of
the word "NET" does not change the meaning of
the word "NET."
As to applicant's argument that, even if merely
descriptive, a disclaimer of the term "NET" is not required
because its "SAVIN NET" mark is unitary, the Examining Attorney
Ser. No. 75/565,398
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observes that the elements of such mark are not so merged
together that they cannot be regarded as separable.2 In
particular, the Examining Attorney maintains that, unlike the
mark "LIGHT N'LIVELY" in In re Kraft, supra, "the proximity of
the two 'N's' in the words comprising the Applicant's ... mark do
not create a cadence that encourages persons to view the ... mark
as a whole." Instead, the Examining Attorney states that those
encountering applicant's "SAVIN NET" mark "will merely see the
word 'NET' as an abbreviation of the word 'NETWORK,' and as a
reference to the purpose and function and a feature of the
Applicant's goods and services." According to the Examining
Attorney, "[no] alliteration is created by the combination of the
words 'SAVIN' and 'NET,' nor [is there] a slurring of the words
such that 'SAVIN NET' sounds like 'SAVING IT,' ... nor [is there]
any other similar cadence [which] is created such that consumers
would find that the combination of the words is so inseparable
... [as constituting] a source indicator for the applicant's
goods and services."
Concerning the third-party registrations submitted by
applicant, the Examining Attorney insists that they do not
2 Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), provides in
relevant part that an applicant may be required "to disclaim an
unregistrable component of a mark otherwise registrable." As
explained in Dena Corp. v. Belvedere Int'l Inc., 950 F.2d 1555, 21
USPQ2d 1047, 1051 (Fed. Cir. 1991):
A unitary mark simply has no "unregistrable component," but
is instead an inseparable whole. A unitary mark cannot be
separated into registrable and nonregistrable parts.
Because unitary marks do not fit within the language of
section 1056(a), the ... [Examining Attorney] cannot require
a disclaimer.
Ser. No. 75/565,398
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"suggest either that the Applicant's ... mark is unitary or that
the Office has begun refraining from requiring disclaimers of the
word 'NET.'" While correctly pointing out, as set forth in In re
Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB 1977),
that each case must be considered on its own merits3 and that a
mark which is merely descriptive is not made registrable simply
because the register already contains a similar mark or marks,
the Examining Attorney notes that he has introduced numerous
third-party registrations, some of which issued as recently as a
year ago, in which "the Office has required disclaimers of the
word 'NET'" for goods and services involving computers, computer
networks and/or on-line applications. "More significantly," as
the Examining Attorney accurately observes, the third-party
registrations furnished by applicant "actually tend to support
the Examining Attorney's position" because, in almost every
instance, they "are consistent with past and current practices of
not requiring disclaimers in slogans or telescoped marks."
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of any ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
3 See, e.g., 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 ...
allowance of such prior registrations does not bind the Board or this
court."]; In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 (TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d 1753,
1758 (TTAB 1991).
Ser. No. 75/565,398
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and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). It is not necessary that a term describe all
of the properties or functions of the goods or 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. Moreover, 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. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
We agree with the Examining Attorney that requiring a
disclaimer of the term "NET," which in the context of applicant's
goods and services plainly signifies "NETWORK," is proper because
such term is merely descriptive of such goods and services for
on-line use and is not an inseparable part of the mark "SAVIN
NET" as a whole. In particular, we find that the term "NET"
immediately describes, without conjecture or speculation, a
significant characteristic or feature, as well as a function or
purpose, of applicant's computer software for a real-time on-line
system for processing parts and supplies orders by its customers
and its associated computerized on-line ordering services in the
Ser. No. 75/565,398
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field of office machinery and equipment. Such term conveys
forthwith that, as identified in its application, applicant's
goods and services are net- or network-based, in that they are
connected to or accessible by a computer network, irrespective of
whether such network is a global one, like the Internet, or is
actually a private network, like that created by the computer
software system offered by applicant, which links its customers
through the use of modems and telephone lines for purposes of
processing parts and supplies orders.
Applicant's brochure, as noted previously, clearly
states that "Savin Net is an ON-LINE processing system" and that
the goods and services to be provided under its "SAVIN NET" mark
are designed to allow users to "[c]ommunicate with ANYONE in the
Savin Net network through the E-MAIL function" and to "[s]hare
information with other dealers and communicate directly with your
Savin Dealer Regional Office." Such a system for the transfer or
transmission of data and other information between computers,
which applicant acknowledges in the case of its goods and
services is done via modems through the use of telephone lines so
as to interconnect its customers to applicant and each other,
plainly meets the definitions of "net" and "network" which are of
record. Therefore, consistent with virtually all of the third-
party registrations made of record by both applicant and the
Examining Attorney, a disclaimer of "NET" is indeed proper unless
the mark "SAVIN NET" is a unitary mark.
Contrary to applicant's arguments, the term "NET" is
not an inseparable part of the mark "SAVIN NET" viewed as a
Ser. No. 75/565,398
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whole. Specifically, we agree with the Examining Attorney that
the alliteration created by the proximity of the double letters
"N" in the terms comprising applicant's mark is too pronounced,
rather than too subtle, to create a cadence that encourages
customers to regard the mark as an inseparable whole. The
combination of the terms "SAVIN" and "NET" does not result in a
separate and distinct meaning which is independent of the meaning
of the constituent elements or project a single and distinct
commercial impression. Such elements are simply not so merged
together that they cannot be regarded as separate. There thus is
no slurring which would suggest "SAVING IT," nor would a "safety
net" come readily to a customer's mind. Instead, in the context
of applicant's goods and services, customers would view the mark
"SAVIN NET" as connoting a network for dealers in and retailers
of Savin office machinery and equipment. While applicant also
uses a variant of its "SAVIN NET" mark in which the two letters
"N" overlap so as to give the impression of a single integrated
term, the specimens of use plainly demonstrate that applicant
utilizes the mark it seeks to register in the same format as
shown on the drawing, that is, as the two separate terms "SAVIN
NET." In view thereof, we concur with the Examining Attorney
that the mark "SAVIN NET" is not unitary.4 Absent a disclaimer
4 See, e.g., Dena Corp. v. Belvedere Int'l Inc., supra at 1052 [mark
consisting of the words "EUROPEAN FORMULA" depicted above a circular
design on a dark square or background for cosmetics held not unitary];
In re Lean Line, Inc., 229 USPQ 781, 782-83 (TTAB 1986) [mark "LEAN
LINE" for low calorie foods found not unitary; requirement for
disclaimer of "LEAN" held proper]; In re IBP, Inc., 228 USPQ 303, 304
(TTAB 1985) [mark "IBP SELECT TRIM" for pork held not unitary; refusal
of registration affirmed in absence of a disclaimer of "SELECT TRIM"];
In re Uniroyal, Inc., 215 USPQ 716, 719 (TTAB 1982) [mark "UNIROYAL
Ser. No. 75/565,398
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of the merely descriptive term "NET," such mark is accordingly
not registrable.
Decision: The requirement for a disclaimer under
Section 6(a) is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant's mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the merely descriptive term "NET".5
STEEL/GLAS" for vehicle tires found not unitary; requirement for
disclaimer of "STEEL/GLAS" held appropriate]; and In re EBS Data
Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) [mark "PHACTS POCKET
PROFILE" for personal medication history summary and record forms held
not unitary; refusal to register affirmed in absence of a disclaimer
of "POCKET PROFILE"].
5 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).