Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA380910
`ESTTA Tracking number:
`11/29/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78863190
`Microsoft Corporation
`WINDOWS RALLY
`WILLIAM O. FERRON, JR.
`SEED IP LAW GROUP PLLC
`701 FIFTH AVENUE, SUITE 5400
`SEATTLE, WA 98104
`UNITED STATES
`BillF.docketing@SeedIP.com
`Appeal Brief
`Appeal_Brief.PDF ( 23 pages )(1155172 bytes )
`original_specimen_highlighted.pdf ( 1 page )(168736 bytes )
`printout_microsoft.pdf ( 1 page )(253620 bytes )
`printout_foldoc.pdf ( 1 page )(169661 bytes )
`printout_Merriam_Webster.pdf ( 2 pages )(146565 bytes )
`William O. Ferron, Jr.
`BillF.docketing@SeedIP.com
`/William O. Ferron, Jr./
`11/29/2010
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ON APPEAL
`
`Applicant
`
`Serial No.
`
`Filed
`
`Mark
`
`: Microsoft Corporation
`
`:
`
`:
`
`78/863,190
`
`April 17, 2006
`
`: WINDOWS RALLY in Class 9
`
`TM Attorney
`
`Law Office
`
`Docket No.
`
`'
`
`Date
`
`:
`
`:
`
`:
`
`:
`
`Debra Lee
`
`1 16
`
`663005.20379
`
`November 29, 2010
`
`Trademark Trial and Appeal Board
`Commissioner for Trademarks
`
`.
`PO. Box 1451
`Alexandria, Virginia 22313-1451
`
`APPLICANT’S APPEAL BRIEF
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................................ .. 1
`
`PROCEDURAL HISTORY ......................................................................................... .. 1
`
`III.
`
`ARGUMENT ............................................................................................................... .. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Applicant’s WINDOWS RALLY Goods Include Software That
`Performs the Functions Claimed in Its Original Description of
`Goods ............................................................................................................... .. 4
`
`Applicant’s Amended Goods Description Is Within the Scope of
`the Original Goods and Should Be Accepted .................................................. .. 5
`
`Applicant’s Specimen Shows Use of WINDOWS RALLY for Both
`Its Original and Amended Goods ..................................................................... .. 7
`
`Applicant’s Response to Request for Additional Information Is
`Acceptable ........................................................................................................ .. 8
`
`E.
`
`The Disclaimer Requirement Should Be Withdrawn ...................................... .. 9
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The WINDOWS RALLY Goods Do Not Create or Manage
`a Graphical User Interface ................................................................... .. 9
`
`Whether a Term Is “Merely Descriptive” Must Be
`Determined Based on the Specific Goods for Which
`Registration Is Sought ........................................................................ .. 10
`
`To Be “Merely Descriptive” a Term Must Immediately
`Convey Information About Applicant’s Goods With a
`Degree of Particularity ....................................................................... .. 10
`
`“WINDOWS” Does Not Immediately Convey Information
`About Applicant’s Goods With a Degree of Particularity .................. . .14
`
`Considering “WINDOWS RALLY” in Its Entirety
`Confirms “WINDOWS” Is Not Merely Descriptive .......................... .. 16
`
`Burden and Doubt Resolved in Favor of Applicant ........................... .. 18
`
`IV.
`
`CONCLUSION .......................................................................................................... .. 18
`
`

`
`CASES
`
`TABLE OF AUTHORITIES
`
`Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949 (TTAB
`1981) ............................................................................................................................. ..10,11,16
`
`In re Acquisition Solutions, Inc., 2005 WL 363389 (TTAB 2004) ........................ ..10, 13, 16, 18
`
`In Re Ciba Specialty Chemical Corp., 2005 WL 1113335 (TTAB
`2005) ........................................................................................................................................... ..5
`
`In re Commerce Bancorp, Inc., 2006 WL 2037589 (TTAB 2005) ............................... ..13, 14, 16
`
`In re Dinwiddie, 347 F.2d 1016 (CCPA 1965) ........................................................................... ..5
`
`In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972) ...................................................... ..18
`
`In re Hollywood Stock Exchange, LLC, 2006 WL 3227260 (TTAB
`2006) ......................................................................................................................................... ..18
`
`In re I.P. International, Inc., 2003 WL 21653644 (TTAB 2003) ................................. ..13, 15, 16
`
`In re International Business Machines Corp., 2008 WL 853824
`(TTAB 2008) .......................................................................................................... ..10,13,16,18
`
`‘In re Jones Investment Co. Inc., 2009 WL 273242 (TTAB 2009) ................................ ..10, 16, 18
`
`In re Matsushita Electric Corporation ofAmerica, 2002 WL 1760828,
`at *4-5 (TTAB 2002) .............................................................................................. ..11, 16, 17, 18
`
`In re MediaNews Group Interactive, Inc., 2008 WL 4803891 (TTAB
`2008) ................................................................................................................................... ..10, 16
`
`In re Microstrategy Inc., 2001 WL 537143 (TTAB 2001) ............................... ..11, 12, 16, 17, 18
`
`In re TMS Corp. ofthe Americas, 200 USPQ 57 (TTAB 1978) ....................... ..10, 11, 15, 16, 17
`
`In re Tower Tech, Inc., 2003 WL 705680 (TTAB 2003) .............................................. ..12, 13, 18
`
`In re Wells Fargo & Co., 231 USPQ 116 (TTAB 1986) .................................................... ..14, 16
`
`Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) ............................................... ..11
`
`Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199
`(TTAB 1981) ...................................................................................................................... ..10, 16
`
`

`
`OTHER AUTHORITIES
`
`TMEP Sections 904.04(d), 904.06(b) ......................................................................................... ..8
`
`iii
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`I.
`
`INTRODUCTION
`
`Applicant appeals the following actions by the Examining Attorney in the September 16,
`
`2010 Final Office Action:
`
`(1)
`
`Refiising App1icant’s amended goods description as allegedly not within the scope
`
`of the original goods identification;
`
`(2)
`
`Refusing to accept Applicant’s Specimen of Use and requiring a substitute
`
`specimen;
`
`(3)
`
`(4)
`
`mark.
`
`Requiring additional information regarding the goods; and
`
`Requiring a disclaimer of the “WINDOWS” portion of the WINDOWS RALLY
`
`II.
`
`PROCEDURAL HISTORY
`
`On April 17, 2006, Applicant filed Application Serial No. 78/863,190 to register the mark
`
`WINDOWS RALLY in Class 9 for “computer software for managing network communications;
`
`computer software for connecting computers, computer peripherals, digital cameras, cell phones
`
`and software application programs to computer networks; and computer software for managing
`
`power supplies for computers” (the “’l90 Application”).
`
`On November 8, 2006, a Notice of Publication issued for the ’l90 Application, and on
`
`November 28, 2006, the ’190 Application published.
`
`On February 20, 2007, a Notice of Allowance was issued for the ’l90 Application.
`
`On February 13, 2008, Applicant filed a Statement of Use.
`
`On April 12, 2008, Examining Attorney David Elton issued an Office Action requiring
`
`Applicant to disclaim the “WINDOWS” portion of the WINDOWS RALLY mark or seek
`
`registration based on Section 2(f) for the “WINDOWS” portion of the mark. This disclaimer
`
`requirement was pursuant a PTO memorandum circulated to all examining attorneys handling
`
`Applicant’s applications for marks including the term “WINDOWS” for software and related
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`services, instructing that “[t]he position of the USPTO remains that the term ‘WINDOWS’ is
`
`descriptive for software that utilizes framed viewing areas as part of a graphical user interface
`
`and computer software services associated therewith,” and mandating that examining attorneys
`
`require disclaimers or partial 2(t) claims for the term “WINDOWS” in such applications. (May 4,
`
`2009 Ferron Decl. at 1] 7 & Ex. 1 (email excerpt forwarded by Examining Attorney), submitted
`
`with May 4, 2009 Request for Reconsideration in the present application).
`
`On October 13, 2008, Applicant filed a response to the April 12, 2008 Office Action.
`
`On November 4, 2008, the Examining Attorney issued a Final Office Action requiring
`
`Applicant to disclaim the “WINDOWS” portion of the WINDOWS RALLY mark or seek
`
`registration based on Section 2(f) for the “WINDOWS” portion of the mark.
`
`On May 4, 2009, Applicant filed a Request for Reconsideration, supporting declarations
`
`and exhibits from William O. Ferron, Jr. (dated May 4, 2009) and Denise Trabona (dated April
`
`30, 2009) and a Notice of Appeal explaining, among other things, the blanket merely descriptive
`
`refusal for all composite marks having the term “WINDOWS” was improper and against Board
`
`precedent.
`
`On June 2, 2009, Applicant filed a Supplemental Request for Reconsideration.
`
`On July 21, 2009, Applicant received an Office Action notifying it that the USPTO has
`
`reassigned this application to Examining Attorney Debra Lee. In that same Office Action, the
`
`Examining Attorney required a substitute specimen, additional information regarding the goods,
`
`and maintained the disclaimer requirement of the “WINDOWS” portion of the mark.
`
`Examining Attorney Lee was also assigned to Applicant’s other pending applications for
`
`marks including “WINDOWS” and in those applications backed away from the blanket merely
`
`descriptive refusal in favor of a case-by—case review of the mark and claimed goods and services,
`
`and has allowed applications for the following marks without disclaimers of “Windows”:
`
`WINDOWS LIVE in Classes 38, 41 and 42 (Sns. 78/858267 and 78/858279), WINDOWS
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`POWERSHELL in Class 9 (Sn. 78/869476), and WINDOWS READYDRIVE in Class 9 (Sn.
`78/850419).
`I
`
`On January 21, 2010, Applicant filed a response and proposed amended goods. In this
`
`response, Applicant offered to amend its goods description to clarify how the WINDOWS
`
`RALLY mark is used in connection with computer software platforms and computer software
`
`development tools, none of which create or manage a graphical user interface. Applicant also
`
`explained how its specimen shows use of the WINDOWS RALLY mark for the recited goods
`
`and that there is no descriptive connection between the WINDOWS RALLY mark and
`
`rectangular display windows on a computer screen from a graphical user interface.
`
`On February 19, 2010, the Examining Attorney issued an Office Action alleging that
`
`App1icant’s proposed amendment to the goods listing was unacceptable and maintaining the
`
`requirements from the July 21, 2009 Office Action.
`On August 19, 2010, Applicant filed a response explaining why Applicant’s amended '
`
`goods description was proper, the specimen should be accepted, and the disclaimer requirement
`
`was improper.
`
`On September 16, 2010, the Examining Attorney issued a Final Office Action requiring
`
`an acceptable identification of goods, a substitute specimen, additional information regarding the
`
`goods, and a disclaimer of the “WINDOWS” portion of the mark.
`
`On September 20, 2010, the TTAB issued an order resuming the previously filed appeal,
`
`giving Applicant until November 29, 2010 to file an appeal brief.
`
`III.
`
`ARGUMENT
`
`As set forth below, Applicant believes each of the Examining Attorney’s contentions in
`
`the Final Office Action are in error and respectfiilly requests that the Board reverse the refusals
`
`and allow registration of this mark on the Principal Register.
`
`

`
`
`
`Appeal Brief for Appl. Sn. 78/863190
`
`A.
`
`Applicant’s WINDOWS RALLY Goods Include Software That Performs the
`Functions Claimed in Its Original Description of Goods
`
`Applicant seeks registration for WINDOWS RALLY for the following goods (underlined
`
`portion reflects Applicant’s January 21, 2010 amendment):
`
`computer software for managing network communications; computer software for
`
`connecting computers, computer peripherals, digital cameras, cell phones and
`
`software application programs to computer networks; computer software for
`
`managing power supplies for computers; all in the nature of computer software
`
`platforms and computer software development tools for such functions and uses.
`
`Applicant’s WINDOWS RALLY goods comprise computer software that allows users to
`
`manage network communicating and power supplies, and to connect various computer devices.
`
`Software programs that actually perform these functions are supplied to consumers as part of
`
`Applicant’s WINDOWS RALLY software development kit (SDK). Users can customize these
`
`programs for their particular needs, but the WINDOWS RALLY software programs as provided
`
`to users perform these functions.
`
`For example, Applicant’s WINDOWS RALLY product “contains the complete source
`
`code for a raw sockets-based implementation of LLTD [Link Layer Topology Discovery],” which
`
`is computer software for managing network communications. (Specimen, highlighted copy filed
`
`herewith). While a developer may customize a specific implementation of this source code, the
`
`WINDOWS RALLY product nevertheless includes a set of complete software programs for the
`
`management of network connections.
`
`Similarly, the WINDOWS RALLY product contains “plug and play” software code (“PnP
`
`X”) for networking any device into a plug and play device. (Specimen). This software is a set of
`
`complete source code for connecting computers, computer peripherals, digital cameras, cell
`
`phones and software application programs to computer networks. Again, the WINDOWS
`
`RALLY product allows a developer to customize specific implementations of this source code,
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`but the WINDOWS RALLY SDK includes a set of complete software for providing the various
`
`functions listed in the goods.
`
`More information regarding Applicant’s WINDOWS RALLY goods is submitted
`
`herewith from Applicant’s website, www.microsoft.com/whdc/connect/rally/default.mspx.
`
`B.
`
`Applicant’s Amended Goods Description Is Within the Scope of the Original
`Goods and Should Be Accepted
`
`Applicant’s amendment to add the underlined portion of its goods listed above was
`
`rejected in the February 19, 2010 Office Action under the reasoning that “[d]evelopment tools
`
`may be used to develop computer software that manages network communications, that connects
`
`computers, computer peripherals, digital cameras, cell phones and software application programs
`
`to computer networks, and that manages power supplies for computers, but software
`
`development tools are not used to perform these functions.” (February 19 Office Action at 2).
`
`The Examining Attorney’s main premise, as set forth in the September 16, 2010 Final
`
`Office Action, is that a “software development kit” (SDK) like Applicant’s WINDOWS RALLY
`
`software is used to create other software programs, i.e., it is a set of software building blocks in
`
`the form ofsource code, and that because of this, the SDK itself does not perform the above
`
`functions of managing network communications, etc. (Sept. 16 Final Office Action at 3,
`
`emphasis added). In other words, the Examining Attorney is of the view that Applicant’s
`
`WINDOWS RALLY software only has building blocks to create the claimed software, not the
`
`claimed software itself.
`
`The Examining Attorney’s position is factually wrong and unsupported by the record.
`
`While some software development kits may contain only building blocks and not complete
`
`functioning programs, Applicant’s WINDOWS RALLY product is not one of them. The record
`
`is clear that Applicant’s product has software programs that perform the claimed functions. The
`
`Examining Attorney cannot substitute her opinion or speculate as to facts contrary to the record.
`
`See In Re Ciba Specialty Chemical Corp., 2005 WL 1113335, *3 (TTAB 2005) (evidence
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`submitted by applicant accepted by Board over examining attomey’s speculation, reversing
`
`requirement for substitute specimen) (non-precedential); see also In re Dinwiddie, 347 F.2d 1016
`
`(CCPA 1965) (the evidence included appellant's “concrete explanation” versus the Board’s
`
`“unsupported speculation”). Here, Applicant has indicated in its Statement of Use declaration
`
`that its WINDOWS RALLY software programs perform the claimed function and provided an
`
`explanation on the record as to how and why that is true.
`
`Applicant’s original goods listed “computer software for ...” followed by a listing of a
`
`variety of functions, such as “managing network communications,” “connecting computers,
`
`computer peripherals, digital cameras, cell phones and software application programs to
`
`computer networks,” and “managing power supplies for computers.” Applicant proposed a
`
`narrowing amendment of this goods listing to clarify that the claimed computer software is “all in
`
`the nature of computer software platforms and computer software development tools for such
`
`functions and uses.” Applicant selected “software platforms and software development tools” for
`
`its amendment because these terms are in the USPTO’s pre-approved goods descriptions and
`
`because they fairly and accurately describe its goods. Applicant’s amended goods are not
`
`broader than its original goods because the amendment qualifies and narrows the original goods.
`
`The Examining Attorney’s rejection is therefore improper.
`
`The Examining Attorney and Applicant both agree that the proposed amended language
`
`of “computer software platforms and computer software development tools” recites computer
`
`software. It is clear that “software” is a very broad term that includes source code and the other
`
`code found within Applicant’s WINDOWS RALLY SDK.
`
`(See “software” definition enclosed
`
`herewith from http://foldoc.org[software stating, among other things, that “software” “includes
`
`both source code written by humans and executable machine code produced by assemblers or
`
`compilers”).
`
`The disagreement appears to be over whether Applicant’s SDK software can be fairly
`
`characterized as being “for” the functions recited in the original application.
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`As discussed above, Applicant’s WINDOWS RALLY goods comprise an SDK that dQe_s
`
`include computer software that performs these functions. The WINDOWS RALLY SDK
`
`includes a set of complete software source code for providing the various functions listed in the
`
`goods. (Specimen). Applicant’s amendment simply clarifies that the claimed software
`
`comprises a software platform and development tools, which in combination describes its SDK.
`
`It is true that a programmer can use the SDK to create other programs for specific devices
`
`to perform the listed functions. But even under this scenario, the WINDOWS RALLY SDK is
`
`still “for” the specified functions. The term “for” is defined as “a function word to indicate
`
`purpose” or “to indicate an intended goal.” (See “for” definition enclosed herewith from
`
`http://www.merriam-Webster.corn/dictionary/for). SDK computer software providing all of the
`
`building blocks for creating other programs performing the listed functions is still “for” the listed
`
`functions. In these instances, the SDK’s purpose and intended goal is to provide those functions
`
`in the form of the final software developed. The WINDOWS RALLY SDK is undeniably for the
`
`listed functions. Indeed, without the WINDOWS RALLY SDK, those functions would not be
`
`provided.
`
`Applicant’s original goods listing of “computer software” is broad enough to encompass
`
`a_ll software for the listed functions, even source code that must be compiled. There is no support
`
`for the Examining Attorney’s overly narrow View that an SDK and source code for providing the
`
`listed functions is not “computer software.” The proposed narrowing amendment of “computer
`
`software platforms and computer software development tools for such functions and uses” recites
`
`software for the listed functions. Accordingly, the rejection of Applicant’s amended goods
`
`listing should be reversed and the amended goods should be entered in the ’ 190 Application.
`
`C.
`
`Applicant’s Specimen Shows Use of WINDOWS RALLY for Both Its
`Original and Amended Goods
`
`Applicant’s Specimen was rejected as allegedly not showing use of the WINDOWS
`
`RALLY mark in connection with the originally listed goods. Applicant disagrees.
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`The Specimen submitted by Applicant shows the WINDOWS RALLY mark used in
`
`connection with the WINDOWS RALLY software. As discussed above, the WINDOWS
`
`RALLY software includes networking software for “sockets—based implementation of LLTD”
`
`and “plug and play” software code for connecting networking devices, as claimed in Applicant’s
`
`original description of goods. Thus, under Applicant’s original goods listing, the WINDOWS
`
`RALLY LLTD and plug and play software code shown in the original specimen is “computer
`
`software for managing network communications” among other things.
`
`Moreover, under Applicant’s amended goods, the WINDOWS RALLY software shown
`
`in the original specimen is a collection of “computer software development tools for such
`
`functions and uses.” Applicant’s specimen is an Internet website showing use of the WINDOWS
`
`RALLY mark providing an explanation of the WINDOWS RALLY SDK and providing links to
`
`download the software, including the LLTD and plug and play software discussed above. This
`
`specimen is acceptable under the TMEP Sections 904.04(d) and 904.06(b).
`
`Thus, under either Applicant’s original or amended goods listing, the original specimen
`
`of use is acceptable and the requirement for a substitute specimen should be reversed.
`
`D.
`
`Applicant’s Response to Request for Additional Information Is Acceptable
`
`The Examining Attorney requested additional information as to whether Applicant’s
`
`WINDOWS RALLY software features a graphical user interface. Applicant provided the
`
`requested information on several occasions, including in its May 4, 2009, January 21, 2010 and
`
`August 19, 2010 filings, confirming that the WINDOWS RALLY software claimed in this
`
`application does not create or manage a graphical user interface. Rather, the primary function of
`
`the WINDOWS RALLY software platform is to interact with hardware devices for the functions
`
`listed in this application, for example computer networking — something that does not involve a
`
`human interface. Applicant also clarified that when the development tools software is being
`
`used, there is a graphical user interface on a developer’s computer but it is created and controlled
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`by other software that is not claimed in this application and not offered under the WINDOWS
`
`RALLY mark.
`
`The material in the record (including the Trabona and Ferron declarations submitted in
`
`the May 4, 2009 Request for Consideration), and the clarifications in the January 21, 2010 and
`
`August 19, 2010 filings, show that Applicant’s WINDOWS RALLY software is a collection of
`
`software for providing the claimed functionality. Applicant has also provided the requested
`
`information, clearly showing the WINDOWS RALLY mark is not descriptive of any feature of
`
`the claimed goods and does not have or provide a graphical user interface.
`
`Applicant therefore believes the requirement for additional information should be
`
`reversed.
`
`E.
`
`The Disclaimer Requirement Should Be Withdrawn
`
`The Examining Attorney is requiring Applicant to disclaim the “WINDOWS” portion of
`
`its WINDOWS RALLY mark under the reasoning that “WINDOWS” allegedly merely describes
`
`a feature of Applicant’s software, which the Examining Attorney describes as a “rectangular
`
`frame on a computer screen” generated from a graphical user interface. This rejection is based
`
`on what Applicant understands to be an improper policy set by a few Examining Attorneys at the
`
`PTO to give blanket disclaimer requirements for any software mark having “WINDOWS” as part
`
`of the mark, regardless of the specific goods at issue. As discussed below, the disclaimer
`
`requirement is improper because the WINDOWS RALLY goods do not feature a graphical user
`
`interface, and moreover, the disclaimer requirement is not in line with TTAB precedent that a
`
`term is only descriptive if it immediately conveys information with a degree of particularity
`
`based on the specific goods and the entire mark.
`
`1.
`
`The WINDOWS RALLY Goods Do Not Create or Manage a
`
`Graphical User Interface
`
`Applicant has clearly stated and provided proof in the record that its WINDOWS RALLY
`
`software does not create or manage a graphical user interface and does not feature rectangular
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
`
`frames generated on a computer screen. Like most modern PC software, the WINDOWS
`
`RALLY development tools run within a graphical user interface (GUI), but the creation and
`
`management of the GUI is not a function of the WINDOWS RALLY software. Other software
`
`in the PC operating system performs these functions. Thus, “WINDOWS” does not describe a
`
`feature function of the WINDOWS RALLY software and, in particular, is not merely descriptive
`
`of it.
`
`The WINDOWS RALLY mark is an arbitrary term that is incongruous and nonsensical in
`
`relation to the claimed software. Indeed, even if for the sake of argument “window” was
`
`ascribed the meaning of rectangular display on a computer, it makes no sense to say the
`
`“window” can “rally.”
`
`2.
`
`Whether a Term Is “Merely Descriptive” Must Be Determined Based
`on the Specific Goods for Which Registration Is Sought
`
`Whether a mark or term is merely descriptive “must be determined not in the abstract, but
`
`in relation to the goods or services for which registration is sought, the context in which it is
`
`used, and the significance it is likely to have to the average purchaser as he encounters the goods
`
`or services in the marketplace.” In re TMS Corp. ofthe Americas, 200 USPQ 57, 58 (TTAB
`
`1978); see also In re International Business Machines Corp., 2008 WL 853824, at *5 (TTAB
`
`2008) (non-precedential).
`
`3.
`
`To Be “Merely Descriptive” a Term Must Immediately Convey
`Information About Applicant’s Goods With a Degree of Particularity
`
`It is well settled that in order to be merely descriptive, a mark must immediately convey
`
`information as to the qualities, features or characteristics of the goods and/or services with a
`
`“degree of particularity.” Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199,
`
`1204-1205 (TTAB 1981) (emphasis added); Holiday Inns, Inc. v. Monolith Enterprises, 212
`
`USPQ 949, 952 (TTAB 1981); In re TMS, 200 USPQ at 59; see also In re Jones Investment Co.
`
`Inc., 2009 WL 273242, at *2 (TTAB 2009) (non—precedential); In re MediaNews Group
`
`10
`
`

`
`Appeal Brief for Appl. Sn. 78/863190
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`Interactive, Inc., 2008 WL 4803891, at *2 (TTAB 2008) (non-precedential); In re International
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`Business Machines, 2008 WL 853824, at *5; In re Acquisition Solutions, Inc., 2005 WL 363389,
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`at *2-3 (TTAB 2004) (non-precedential); In re Matsushita Electric Corporation ofAmerica,
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`2002 WL 1760828, at *4-5 (TTAB 2002) (non-precedential); In re Microstrategy Inc., 2001 WL
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`537143, at *3-4 (TTAB 2001) (non-precedential).
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`A mark can be made of “commonly used words of the English language” and still not
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`describe Applicant’s goods “in any one degree of particularity.” In re TMS, 200 USPQ at 59.
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`Board precedent and decisions firmly establish that general industry terms that fail to describe an
`applicant’s goods with any degree ofparticularity are suggestive, not merely descriptive.
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`For example, the Board found that THE MONEY SERVICE was suggestive for banking
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`services even though “‘THE MONEY SERVICE’ is composed of commonly used words in the
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`English language” and “money” was certainly involved in applicant’s services. In re TMS, 200
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`USPQ at 59. The Board held that the mark “falls short of describing applicant’s services in any
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`one degree of particularity.
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`In short, what we are saying is that applicant’s mark ‘THE
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`MONEY SERVICE’ does not directly or indirectly convey any vital purposes, characteristics or
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`qualities of applicant’s services.” Id. at 59. “‘THE MONEY SERVICE’ suggests some form of
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`monetary service, but that does not in any way describe applicant’s actual service.” Id. at 5 8. To
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`say that the service involved “money” was of no meaningful description. Thus, the mark is a
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`suggestive and not merely descriptive designation. Id. at 59.
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`Moreover, COLOR CARE was suggestive, not descriptive, for laundry bleach because
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`most, if not all laundry bleaches at that time were able to be used with color garments. In re
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`Morton-Norwich Products, Inc., 209 USPQ 791, 792 (TTAB 1981). In prior years, bleaches
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`included chlorine and were therefore destructive to color garments. But when applicant
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`submitted its application, laundry bleaches had eliminated chlorine and could be used with
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`colors. “Thus, a precise meaning attributable to the term ‘COLOR CARE’ as used on a laundry
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`bleach is somewhat nebulous.” Id.
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`Appeal Brief for Appl. Sn. 78/863190
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`Similarly, the Board found AMERICAN in THE AMERICAN CAFE not descriptive
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`because the term “is nebulous, at best” for restaurant services—it does not tell you what to expect
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`as to the food or the decor of the establishment. Holiday Inns, 212 USPQ at 952.
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`Likewise, in In re Microstrategy Inc. , the Board reversed the Examiner’s requirement of a
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`disclaimer and descriptiveness refusal for the mark DSS BROADCASTER for “computer
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`software for on-line analytical processing and data analysis, namely processing and analyzing
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`data for the purpose of delivering customized and personalized information to targeted
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`recipients.” 2001 WL 537143 at *1. The Examining Attorney made the argument that DSS
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`BROADCASTER was merely descriptive of a central feature of the applicant’s computer
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`programs, i.e., specifically disseminating or broadcasting information. Id. at *2. The Examining
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`Attorney submitted dictionary definitions of DSS and broadcast in support of his position. Id.
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`Applicant argued that the mark is to be viewed as a whole, and even though “broadcast” may
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`have a broad definition with regards to computer programs, there is nothing in the mark as a
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`whole that would enable a potential purchaser to immediately understand the precise nature of
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`the intended function of its goods——-i.e., the mark does not describe applicant’s product or its
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`function, even though it may contain a broad term that generally applies to the goods. Id. at 3.
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`The Board agreed with the applicant in In re Microstrategy Inc. , stating that a term is not
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`descriptive unless it is descriptive “with a degree of particularity” as to the listed goods. Id. Just
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`because in “general terms” “broadcast(s)” or “broadcasting” is used in connection with
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`applicant’s computer programs that disseminate information, it is not “descriptive” in the
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`trademark sense because it does not convey any information with a sufficient degree of
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`particularity regarding the actual nature or characteristics of the listed goods. Id. The Board
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`made the analogy that “‘the fact that the term ‘technology’ is used in connection with computer
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`products does not mean that the term is descriptive of them.”’ In re Microstrategy, 2001 WL
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`537143, at *4.
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`Appeal Brief for Appl. Sn. 78/863190
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`Similarly, in In re Tower Tech, Inc. , the Board held that the mark TOWER TECH was
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`not merely descriptive of cooling tower technology, but rather suggestive. 2003 WL 705680, at
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`*6-7 (TTAB 2003) (non-precedential). The fact that the applicant’s goods and services
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`obviously utilize towers and technology does not mean the term is descriptive as a trademark for
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`the exact cooling tower systems and goods listed. Id.
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`OPEN INVENTION NETWORK was suggestive of various intellectual property services
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`and goods. In re International Business Machines, 2008 WL 853824 at *5. The individual
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`words have “commonly understood meanings,” but the precise goods and services are not
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`described with a degree of particularity. Id.
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`Similarly, SOLUTIONS was not merely descriptive for the ap