UST Global (Singapore) Pte. Ltd.

Trademark Trial and Appeal Board

Apr 29, 2020

87657822 (T.T.A.B. Apr. 29, 2020)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: April 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re UST Global (Singapore) Pte. Ltd.
_____

Serial No. 87657822
_____

Justin D. Swindells, Lauren J. Arnold and Alexis P. Grilli of Nixon Peabody LLP,
for UST Global (Singapore) Pte. Ltd.
Donald O. Johnson, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.
_____

Before Kuhlke, Pologeorgis and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, UST Global (Singapore) Pte. Ltd., applied to register the mark
INFINITY LABS (in standard characters) on the Principal Register for the following
services:
Incubation services, namely, providing work space containing business
equipment to freelancers, start-ups, existing businesses and non-profits,
in International Class 35;

Incubation services, namely, providing financing to freelancers, start-
ups, existing businesses and non-profits; Think tank services in the
nature of consultation services in the field of digital finance, in
International Class 36;
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Think tank services in the nature of consultation services in the field of
additive manufacturing, in International Class 40;

Education services, namely, providing on-line classes, seminars, meet-
ups, and workshops in the fields of retail, software design, technology
research and development, and customer service; Education services,
namely, one-on-one mentoring in the field of retail technology, in
International Class 41; and

Scientific and technological services, namely, research and design in the
fields of smart cities and digital governments, industrial Internet of
Things, additive manufacturing, enterprise mobility, pervasive
computing, machine intelligence, cognitive computing, digital optics,
mixed reality, block chain, digital finance, bio informatics, biometric
identity systems, hyperimaging, artificial vision, cyber defense, digital
forensics, neuromorphic chips, neural analytics, quantum computing,
id3 algorithms, and cryptography; Providing temporary use of on-line
non-downloadable software development tools; Collaborative computer
programming for others in the nature of hackathons; Think tank
services, namely, providing new ideas and concepts for web-based
applications for others; Think tank services in the nature of technical
consultation services in the field of smart cities technologies and digital
governments technologies, industrial Internet of Things, enterprise
mobility technologies, pervasive computing, machine intelligence,
cognitive computing, digital optics technologies, mixed reality, block
chain, biometric identity systems, hyperimaging, artificial vision, cyber
defense, digital forensics, neuromorphic chips, neural analytics,
quantum computing, and cryptography; Platform as a service (PAAS)
services, namely, hosting software for use by others for use in research,
design, and utilization of block chain software, robotic process
automation, social networks, machine learning, Internet of Things,
augmented reality, and advanced analytics; Computer services, namely,
hosting on-line web facilities for others for organizing and conducting
online meetings, gatherings, and interactive discussions, in
International Class 42.1

During prosecution, the Trademark Examining Attorney required Applicant to
disclaim “LABS” apart from the mark as a whole. In response, Applicant disclaimed

1 Application Serial No. 87657822 filed on October 24, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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“LABS” for the Class 35 services and a portion of the Class 42 services, but declined
to disclaim the wording for the services identified in International Classes 36, 40, and
41, as well as the remaining services in Class 42. When the refusal was made final,
Applicant appealed and requested reconsideration. When the request for
reconsideration was denied, this appeal resumed. The appeal is fully briefed.
We affirm the refusal to register.
I. Applicable Law
Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), the USPTO “may
require the applicant to disclaim an unregistrable component of a mark otherwise
registrable,” such as a component which is merely descriptive under Section 2(e)(1);
failure to comply with the requirement is a basis for refusing registration of an
applicant’s proposed mark. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-
1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089
(Fed. Cir. 2005); see also Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560 (Fed.
Cir. 1991) (“an applicant with an otherwise registrable composite mark may, by
disclaimer, avoid rejection due to an unregistrable component of the mark”) (citation
and internal quote marks omitted).2
A term is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or

2 The effect of a disclaimer in a registration is to disavow any exclusive right to the use of a
specified word, phrase, or design “except in the precise relation and association in which it
appeared in the drawing and description.” In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ
662, 664 (CCPA 1979) (quoting In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355,
357 (1953)).
Serial No. 87657822
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services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). A term “need not immediately convey an idea of each
and every specific feature of the goods [or services] in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of the goods [or services].” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).
“Descriptiveness must be evaluated ‘in relation to the particular goods or services
for which registration is sought, the context in which the mark is used, and the
possible significance the term would have to the average consumer because of the
manner of its use or intended use,’” In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 82 USPQ2d
at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys Water
Sports, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978)). “In other words, we evaluate whether someone who knows
what the goods [or services] are will understand the mark to convey information
about them.” Id. at 1515 (citing DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)).
II. The Evidence of Record
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, trade journals,
Serial No. 87657822
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newspapers, or surveys.” In re Bayer AG, 82 USPQ2d at 1831; Abcor Dev., 200 USPQ
at 218; N.C. Lottery, 123 USPQ2d at 1710; In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1565 (Fed. Cir. 2001).
The Examining Attorney provided the following dictionary definitions of
“incubation,” “labs” and “laboratory” in support of the refusal to register INFINITY
LABS (absent the disclaimer of “LABS”):
• Incubation – “to form or consider slowly and protectively, as if hatching”;3

• Lab – an abbreviation for “laboratory”;4 and
• Laboratory – “a place equipped for experimental study in a science or for
testing and analysis” or “any place, situation, set of conditions, or the like,
conducive to experimentation, investigation, observation, etc.; anything
suggestive of a scientific laboratory.”5

Applicant provided a dictionary definition for the wording “think tank”:
• Think tank – “an institute, corporation, or group organized to study a
particular subject (such as a policy issue or a scientific problem) and provide
information, ideas, and advice” or “an organization that consists of a group of
people who think of new ideas on a particular subject or who give advice about
what should be done.” 6

The Examining Attorney also made of record twenty-three use-based third-party
registrations for marks that include and disclaim the term “LABS.”7 “Third party

3 5 TTABVUE 7 (February 2, 2019, Request for Reconsideration Denied). Citations to the
briefs, Request for Reconsideration and Reconsideration Letter refer to TTABVUE, the
Board’s online docketing system. Citations to the examination record refer to the Trademark
Status & Document Retrieval system (TSDR), in the downloadable .pdf format.
4 January 8, 2018 Office Action, TSDR 7.
5 February 2, 2019 Request for Reconsideration Denied, 5 TTABVUE 5.
6 January 17, 2019 Request for Reconsideration, 4 TTABVUE 10.
7 July 17, 2018 Office Action, TSDR 6-68.
Serial No. 87657822
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registrations show the sense in which the word is used in ordinary parlance and may
show that a particular term has descriptive significance as applied to certain goods
or services.” Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958
F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also In re American Furniture
Warehouse Co., 126 USPQ2d 1400, 1404 (2018); In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006).
III. Analysis
The Examining Attorney argues that the evidence of record, including the
dictionary definitions and third-party registrations for marks that include and
disclaim the term “LABS,” shows that the term “LABS” is merely descriptive of all
services identified in each of the four classes that are the subject of this appeal.
Applicant maintains that the term “LABS” does not immediately describe any of the
services without speculation or conjecture; that the Examining Attorney’s third-party
registrations are few in number, inapplicable to the services at issue, and
inconclusive on the determination of descriptiveness; and that the services, as recited
in the application, make no reference to a specific place for study, such as a
laboratory.
We turn now to the services recited in each of the refused classes to evaluate
whether “LABS” is merely descriptive of the services identified. Inasmuch as
Applicant has already disclaimed “LABS” for Class 35 in its entirety and a portion of
the services in Class 42, this appeal pertains to the remaining services identified in
Classes 36, 40, 41 and 42.
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A. Applicant’s Class 36 Services
i. Incubation services, namely, providing financing to
freelancers, start-ups, existing businesses and non-
profits

To support his refusal with respect to Applicant’s Class 36 incubation services, the
Examining Attorney refers to the dictionary definitions of record and two third-party
registrations with the word “LABS” disclaimed:
Registration No. 4228654 for the mark ELEVATOR LABS, and
Registration No. 4228656 for the mark ELEVATOR LABS and Design,
both for “business incubator services, namely, providing financing,
equity capital investment, debt investment, rental of office space, and
strategic consulting, namely, strategic financial advisory services to
start-ups, entrepreneurs and existing businesses”.8

These registrations were not maintained and have been cancelled. To the extent that
they might still be relevant to show the sense in which a term is used in ordinary
parlance, they are not particularly probative without further corroborating evidence.
The Examining Attorney argues that “LABS” merely describes a characteristic or
feature of Applicant’s incubation services in Class 36 “because it provides information
about the services, i.e., that the services are conducive to experimental study,
investigation, observation, testing and analysis.”9 Applicant, however, asserts that
“the Examining Attorney has greatly misunderstood and misinterpreted the wording
in Applicant’s Class 36 services. Applicant is quite clearly offering financial
consulting services to startup businesses.”10 According to Applicant, the Examining

8 July 17, 2018 Office Action, TSDR 13-15.
9 13 TTABVUE 9.
10 11 TTABVUE 6.
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Attorney is “attaching a meaning to the term ‘incubation’ which does not logically
connect to Applicant’s use of the wording.”11
Although characterized as “incubation services,” the essence of Applicant’s
incubation services is the provision of financing to businesses. Thus, in order to
find “LABS” to be merely descriptive of incubation services, namely, providing
financing, the record must include evidence supporting that finding. We do not imply
that the meaning of the term “incubation services” should be ignored; it should not.
But its meaning should be considered along with the substance of those services,
which is the provision of financing. The Examining Attorney does not discuss
financial services and nothing in the record explains how the provision of financing
would be related to “a place equipped for experimental study … for testing and
analysis” or a “place, situation, set of conditions … conducive to experimentation,
investigation, [or] observation,” such that “LABS” would be descriptive of them.
Based on the evidence presented, we find that the Examining Attorney has not
shown that the term “LABS” is merely descriptive of “incubation services, namely,
providing financing to freelancers, start-ups, existing businesses and non-profits.”
ii. Think tank services in the nature of consultation
services in the field of digital finance

With regard to Applicant’s Class 36 “think tank services,” the Examining Attorney
relies on Applicant’s submitted definition of “think tank” (an institute, corporation,
group organized to study a particular subject {such as a policy issue or scientific

11 Id.
Serial No. 87657822
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problem} and provide information, ideas, and advice”), along with three third-party
registrations for marks that include and disclaim “LABS” for think tank services:12
Registration No. 4820765 for the mark PRPL LABS for “Think tank
services, namely, providing new ideas and concepts for web-based
applications for others”;13

Registration No. 5172075 for the mark WDLABS for “Think tank
services, namely, providing and developing ideas and concepts for new
technology innovation and consulting with others in the field of new
technology innovation”;14 and

Registration No. 5254337 for the mark NABLA ZERO LABS for
“Engineering; Scientific research and development; Think tank services,
namely, providing new ideas and concepts for web-based applications for
others; Consultation and research in the field of aerospace
engineering”.15

The Examining Attorney argues that the evidence of record demonstrates that the
word “LABS merely describes a characteristic or feature of Applicant’s Class 36 think
tank services because it provides information that said services are conducive to
experimental study, investigation, observation, testing and analysis.”16 While he
focuses on the preliminary wording “think tank services” in the recitation, the essence
of the specified think tank services, “consultation services in the field of digital
finance,” further defines the scope and nature of the services; the complete meaning
of the services must be considered.

12 Although these registrations cover Class 42 services, as the Examining Attorney notes, the
classification of think tank services depends on the subject matter to which those services
are directed, so classification is not probative. 13 TTABVUE 11, 13.
13 July 17, 2018 Office Action, TSDR 62-63.
14 Id. at 64-66.
15 Id. at 67-68.
16 13 TTABVUE 10.
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The term “think tank’” in the recitation supports a finding of descriptiveness
because like some labs which “deliberate together,” think tanks are “organized to
study a particular subject {such as a policy issue or scientific problem} and provide
information, ideas, and advice.” In addition, we consider the particular nature of
those services, “consultation,” and its relation to think tank services. Although
neither the Examining Attorney nor Applicant defined this term, we need not blind
ourselves to its meaning, which is material to our review. To “consult” means “to
deliberate together.”17
Thus, when we consider the plain meaning of the word consultation within the
context of think tank services, the term “LABS” is descriptive and the actual subject
matter of that deliberation, the field of digital finance, becomes ancillary. This is a
subtle point, but an important one and the reason why our analysis with respect to
these services differs from our view of the disclaimer requirement regarding the
provision of financing services. One of the third-party registrations provided by the
Examining Attorney, Registration No. 5172075 for the mark WDLABS (“LABS”
disclaimed) for “think tank services, namely, [] consulting with others in the field of
new technology innovation,” corroborates this conclusion.
Applicant argues that the Examining Attorney’s definition of “LABS” as “a place
for experimental study in a science or for testing and analysis” precludes a finding

17 https://www.merriam-webster.com/dictionary/consult#h1 (accessed on April 1, 2020). The
Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823
F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 87657822
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that “LABS” is immediately descriptive of its Class 36 services.18 However, as noted
by the Examining Attorney, this argument overlooks the additional meaning of
“LABS” as “any place, situation, set of conditions, or the like, conducive to
experimentation, investigation, observation, etc.”19 So long as any one of the
meanings of a term is descriptive, the term may be considered to be merely
descriptive. In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018)
(quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)). See also In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Considering the overall meaning of Applicant’s services, we find that consumers
of Applicant’s think tank services would immediately understand “LABS” to convey
information about the services, namely that they are provided within a place,
situation, or set of conditions conducive to experimentation, investigation, and/or
observation. Accordingly, “LABS” is merely descriptive of Applicant’s Class 36 think
tank services.
B. Applicant’s Class 40 Services
Think tank services in the nature of consultation services in the
field of additive manufacturing

The Examining Attorney relies on the same evidence to support his refusal with
respect to Applicant’s Class 40 services. As was the case with Applicant’s Class 36
services, the Examining Attorney focuses on the prefatory wording “think tank
services.” He relies on the same definition for think tank services, and the same third-

18 11 TTABVUE 8.
19 13 TTABVUE 11.
Serial No. 87657822
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party registrations. However, for the same reasons we expressed above, the nature of
the think tank services, namely, consultation services, adds to the determination of
the mere descriptiveness of the word “LABS” in connection with the identified
services. Applicant describes these consulting services under the spotlight of “think
tank” services, which lends further support to a finding of descriptiveness. That the
subject matter of those services is “additive manufacturing” only serves to strengthen
that finding.
Applicant argues that
[T]he Examining Attorney cites a mere three registrations which utilize
a disclaimer in connection of think tank services. Once again, Applicant
notes that third party registrations are not conclusive of descriptiveness.
See TMEP §1209.03(a). Even if third-party registrations were sufficient
evidence to conclude descriptiveness, certainly evidence in the form of
three registrations would not be sufficient to conclude
descriptiveness.”20

TRADEMARK MANUAL OF PROCEDURE § 1209.03(a) and the cases referenced therein are
usually cited for the proposition that descriptiveness is often found despite the
absence of a disclaimer in other registrations for similar marks. However, Applicant
is correct in noting that third-party registrations are not conclusive on the question
of descriptiveness. “The Board must decide each case on its own merits.” In re Nett
Designs Inc., 57 USPQ2d at 1565. Therefore, we emphasize that our decision is based
on the definitions of record for the relevant terms being discussed, coupled with our
understanding of how those terms relate to the services at issue. The number of third-

20 11 TTABVUE 10.
Serial No. 87657822
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party registrations is not determinative; the question is whether they support and
corroborate the evidence overall, which they do for Applicant’s Class 40 services.
Applicant also asserts that, despite the fact that think tanks are organized
to study a particular subject,
Subjects can be studied outside of a laboratory – in a conference room,
in an office, in a cafeteria, at a dining room table. Any connection to
think tank services that would be gleaned from “LABS” would have to
be part of a multi-stage reasoning process that 1) first understanding
the meaning of “LABS,” [sic] then 2) understands the meaning of think
tank services (which is not necessarily common knowledge to all
consumers), and finally 3) understand that studying of a subject by the
think tank could be completed in a “LAB.”

As Applicant suggests, the definition of laboratory is not confined to a laboratory
setting. The question is not whether someone who does not understand the services
would find the term descriptive but “[r]ather, [] whether someone who knows what
the goods or services are will understand the mark to convey information about
them,” DuoProSS Meditech Corp., 103 USPQ2d at 1757. Thus, we find that “LABS”
is merely descriptive of Applicant’s Class 40 services.
C. Applicant’s Class 41 Services
Education services, namely, providing on-line classes, seminars,
meet-ups, and workshops in the fields of retail, software design,
technology research and development, and customer service;
Education services, namely, one-on-one mentoring in the field of
retail technology

To support the refusal regarding Applicant’s Class 41 educational services, the
Examining Attorney relies on the dictionary evidence of record and nine third-party
registrations for marks that include and disclaim “LABS” for educational services,
including the following representative examples:
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1. Reg. No. 4889612 for the mark FIRST GREEN LINKS AS LABS for, inter alia,
“Educational services, namely, conducting workshops, webinars and field trips
in the fields of STEM (science, technology, engineering and math) and
environmental education using golf courses as learning laboratories”;21 and

2. Reg. No. 5300069 for the mark BAD SECTOR LABS (“LABS” disclaimed”) for
“Education services, namely, providing live and on-line classes and training in
the field of cybersecurity; security awareness training, namely, training in the
fields of cyber security planning and awareness; software security training,
namely, training others in maintaining software security in the field of cyber
threats and warfare; [] and vulnerabilities in computers, computer systems,
networks, hardware, software applications, digital devices, digital data, and
mobile devices.”22

The Examining Attorney maintains that the term “LABS provides information
that the education services, especially, those providing on-line classes, seminars,
meet-ups, and workshops in the fields of software design and technology research and
development are conducive to experimental study, investigation, observation, testing
and analysis,” and that “[s]omeone who knows what Applicant’s Class 41 education
services are will understand the word LABS to convey information about them.”23 We
agree that it does.
Applicant submits that
the particular education services at issue do not have a connection to the
definitions relied upon by the Examining Attorney either regarding the
term “LABS” nor the definitions discussed in the Examining Attorney’s
denial of Applicant’s Request for Reconsideration. Specifically,

21 July 17, 2018 Office Action, TSDR 28-30.
22 Id. at 46-48.
23 13 TTABVUE 12. The Examining Attorney also cites a non-precedential decision, In re
Global Mentoring Solutions, Inc., 2005 TTAB LEXIS 270 (June 30, 2005), wherein the Board
found “LABS” to be merely descriptive of educational services. Although non-precedential
decisions may be cited and considered for whatever persuasive value they may hold, they are
not binding on the Board. In re Society of Health and Physical Educators, 127 USPQ2d 1584,
1587 n.7 (TTAB 2018). Nor are they a substitute for evidence needed to support a refusal. In
re Nett Designs, 57 USPQ2d at 1566.
Serial No. 87657822
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Applicant’s educational services are not descriptive of “a place equipped
for experimental study in a science or for testing and analysis”. There is
no implication of a “place” for experimentation—these are not education
services in the nature of traditional scientific subject matter such as
biology or chemistry which would have an implied laboratory component
as part of the services.24

However, Applicant ignores the additional definition for “LABS” provided with the
Examining Attorney’s denial of Applicant’s request for reconsideration, defining
“laboratories” as any place, situation, set of conditions, or the like, conducive to
experimentation, investigation, observation. Applicant’s on-line classes, seminars,
meet-ups, and one-on-one mentoring derive from a place, situation or set of conditions
for investigation and study regardless of the subject matter. Moreover, we need not
confine ourselves to the Examining Attorney’s definitions of record. A laboratory is
also “[a] place for practice, observation, or testing,”25 which clearly describes
Applicant’s educational services, provided virtually or otherwise. The third-party
registrations of record corroborate this point. Therefore, we find “LABS” to be merely
descriptive of Applicant’s Class 41 educational services.
D. Applicant’s Class 42 Services
Providing temporary use of on-line non-downloadable software
development tools; Collaborative computer programming for
others in the nature of hackathons; Think tank services, namely,
providing new ideas and concepts for web-based applications
for others; Think tank services in the nature of technical
consultation services in the field of smart cities technologies
and digital governments technologies, industrial Internet of
Things, enterprise mobility technologies, pervasive computing,
machine intelligence, cognitive computing, digital optics
technologies, mixed reality, block chain, biometric identity

24 11 TTABVUE 10-11.
25 https://www.ahdictionary.com/word/search.html?q=laboratory (accessed April 2, 2020).
Serial No. 87657822
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systems, hyperimaging, artificial vision, cyber defense, digital
forensics, neuromorphic chips, neural analytics, quantum
computing, and cryptography; Platform as a service (PAAS)
services, namely, hosting software for use by others for use in
research, design, and utilization of block chain software, robotic
process automation, social networks, machine learning,
Internet of Things, augmented reality, and advanced analytics;
Computer services, namely, hosting on-line web facilities for
others for organizing and conducting online meetings,
gatherings, and interactive discussions

In addition to relying on dictionary evidence, the Examining Attorney submitted
seven third-party registrations for marks that include and disclaim the term “LABS,”
which he believes support the requirement for a disclaimer of “LABS” for Applicant’s
Class 42 services, including the following representative examples:
1. Reg. No. 4515641 for the mark CARNEY LABS (“LABS” disclaimed) for, inter
alia, “Computer software consulting services; multimedia and audio-visual
software consulting services, [] consultation services for developing computer
systems, databases and applications; [] hosting the web-sites of others; []
application service provider (ASP) services featuring software for use in
connection with online education program subscription service, education-
related programs; computer services, namely, hosting on-line web facilities [],
and providing temporary use of non-downloadable interactive educational
computer programs to access existing educational programs in the field of
employee training for work related tasks”;

2. Reg. No. 4431504 for the mark THUNDERBOLT LABS (“LABS” disclaimed)
for, inter alia, “Consulting services for others in the field of design, planning,
and implementation project management of computer software, data analysis
platforms and systems, and cloud computing systems”; and

3. Reg. No. 4536879 for the mark SCOUNDREL LABS (“LABS” disclaimed) for
“Technology consulting services, namely, consulting in the field of computer
software development”.

The Examining Attorney argues that “‘LABS’ describes a characteristic or feature
of Applicant’s Class 42 services because it provides information that Applicant’s
consultation and think-tank services are conducive to experimental study,
Serial No. 87657822
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investigation, observation, testing and analysis.26 Applicant counters that the
Examining Attorney improperly relies on third-party registrations for his refusal,
and that there is no connection between “LABS” and online software, platform as a
service (PAAS) services, or hosting of online web facilities.27
For the same reasons we found “LABS” to be merely descriptive of Applicant’s
Class 40 consultations, we also find it to be merely descriptive of Applicant’s “think
tank services in the nature of technical consultation services” in Class 42.
Additionally, “LABS” is merely descriptive of Applicant’s “collaborative computer
programming for others in the nature of hackathons” because collaboration is akin to
consultation (deliberating together) in a place, situation or set of conditions for
investigation, observation or study. Applicant’s think tank services of providing new
ideas are also described by that definition. Moreover, Applicant concedes that “the
services being offered–which of course are products offered via services–were
developed in a lab.”28 We reach these findings based on the relevant dictionary
evidence and our application of the plain meaning of “LABS” as it applies to
Applicant’s services, which are corroborated by the third-party registrations of
record. Accordingly, we conclude that “LABS” is merely descriptive of at least some
of Applicant’s services in Class 42.

26 13 TTABVUE 13.
27 11 TTABVUE 12.
28 Id.
Serial No. 87657822
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IV. Conclusion
In summary, we find that “LABS” is merely descriptive of all services in Classes
40 and 41, and a portion of the services in Classes 36 and 42. We need not find “LABS”
to be merely descriptive of all services in Classes 36 and 42 to require a disclaimer
for all of the services in those classes. Regarding descriptiveness refusals under
Section 2(e)(1) of the Trademark Act, we apply the well-settled principle that a “[i]f a
mark is descriptive of any of the services in a class for which registration is sought,
it is proper to refuse registration as to the entire class.” Chamber of Commerce of the
U.S., 102 USPQ2d at 1219; In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB
2013) (“If the Board affirms a refusal of an entire class based on the descriptiveness
of the mark for one or more goods in the class, then the entire class will fail.”). We
hold that the same principle applies to disclaimer refusals.29
Decision: The refusal to register Applicant’s INFINITY LABS mark based on the
requirement, made under Trademark Act § 6(a), for a disclaimer of the term “LABS”
in Classes 36, 40, 41 and 42 is affirmed.
However, if Applicant submits a disclaimer of “LABS” to the Board within thirty
days, the requirement for the disclaimer will have been met and the application will
proceed. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE § 1218 (2019).30 The disclaimer should read

29 Our holding herein would not prevent a future applicant from dividing its application
pursuant to Trademark Rule 2.87, 37 C.F.R. § 2.87, and separately appealing a disclaimer
requirement for other goods or services within a single class.
30 An applicant’s recourse from a decision by the Board is generally limited to the filing of a
request for reconsideration and/or appealing to the Court of Appeals for the Federal Circuit
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as follows: “No claim is made to the exclusive right to use LABS apart from the mark
as shown.”

or by way of a civil action filed with a federal district court. Entry of disclaimer is one of the
two limited exceptions available for reopening an application (the other being an order by the
Director following the granting of a petition to reopen an application upon a showing of
sufficient cause for consideration of any matter not already adjudicated). Trademark Rule
2.142(g), 37 C.F.R. § 2.142(g). However, the time for filing an appeal of the Board’s decision
is not tolled.