Aspect Software

Trademark Trial and Appeal Board

Dec 4, 2008

No. 78925898 (T.T.A.B. Dec. 4, 2008)

Mailed:
December 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aspect Software, Inc.
________

Serial No. 78925898
_______

Daniel J. Bourque of Bourque & Associates for Aspect
Software, Inc.

April K. Roach, Trademark Examining Attorney, Law Office
115 (J. Brett Golden, Managing Attorney).
_______

Before Quinn, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Aspect Software, Inc. (“applicant”) filed an intent-
to-use application to register the mark UNIFIED IP, in
standard character format, for the goods as amended
identified below:
Customer contact centers, namely,
computer hardware and associated
software for initiating, integrating,
routing, controlling and monitoring
inbound and outbound customer contact
through multiple channels including
public switched telephone networks
(PSTN), VoIP telephone contacts, email,
web and facsimile contacts;
telecommunication systems comprised of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78925898
2
central and private telephone switches,
voice response units and telephone
dialers; computer software used for
managing customer contact centers and
customer contacts through multiple
channels, namely, software for managing
and routing customer contact via
telephone, e-mail, web and facsimile;
computer software used to support the
activities of contact center customer
service representatives and contact
center managers; computer software used
for intelligent contact routing via
telephone, e-mail, web and fax;
computer software used to manage web
chat, interactive voice response, real-
time and historical contact center
report generation and telephone
blending by managing both inbound and
outbound telephone calls; computer
software used to create desktop and
management tools for customer contact
centers, in Class 9 (hereinafter
“customer contact center hardware and
software”).

The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, “UNIFIED IP immediately describes that
the goods serve as a single unified system for integrating
the functions of a customer call center and use Internet
Protocol standards.”1

1 Examining Attorney’s Brief, unnumbered pp. 5 and 9.
Serial No. 78925898
3
To support the descriptiveness refusal, the Examining
Attorney submitted the following relevant evidence:
1. A dictionary definition of the word “unify”
meaning “to make into a unit or a coherent
whole.” Merriam-Webster Online (m-w.com). See
also The American Heritage Dictionary of the
English Language (4th ed. 2000)(bartleby.com) (“to
make into or become a unit: consolidate)”.

2. A dictionary definition of the term IP meaning
“Internet Protocol.” The American Heritage
Dictionary of the English Language (4th ed. 2000)
(bartleby.com). See also MSN.Encarta
(encarta.msn.com).

3. A dictionary definition of the term “Internet
Protocol” meaning a “data transmission standard:
the standard that controls the routing and
structure of data transmitted over the Internet.”
MSN.Encarta (encarta.msn.com).

4. Excerpts from applicant’s website (aspect.com)
displaying use of the mark UNIFIED IP.2

A. Applicant makes the following statements on
its Products Overview page:

[O]ur IP Strategy enables you to
integrate VoIP into your contact
center environment how and when
you want to.

* * *

The Aspect Software IP strategy
takes advantage of the openness
and ubiquity of Voice over
Internet Protocol (VoIP) and the
maturity of Session Initiation
Protocol (SIP) to provide the
foundation for a new and better
contact center. Aspect Software

2 Applicant began using the mark in 2006 (Applicant’s
Supplemental Brief, p. 3).
Serial No. 78925898
4
gives customers the choice between
embracing either closed or open
source IP to address increasingly
dynamic processes and practices
with its open Unified IP Contact
Center product line, or to migrate
to IP over time with its Signature
product line.

* * *

Unified IP Contact Center product
line: Architected around Internet
Protocol standards, the Aspect
Software Unified IP™ Contact
Center products bring extreme
flexibility to dynamic
organizations. Aspect®
EnsemblePro® and Aspect® Uniphi
Suite™, specifically created to
unite multiple capabilities in [a]
single platform, enable customers
to unlock additional functionality
as needed. These proven
capabilities include automatic
call distribution (ACD),
predictive dialing, speech self
service, internet contact via
email or chat, recording, logging
and quality management, all with
unified reporting, routing and
administration. Unified IP
Contact Center products allow
customers their choice of
transport – open source IP, closed
source IP or traditional voice.
(Emphasis added).

Serial No. 78925898
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B. The Unified IP Products page

5. An undated press release or news story in the
*Asterisk VoIP News website
(asteriskvoipnews.com) announcing the 2006 fourth
quarter release of applicant’s Unified IP
solution. The press release reports that the
“Aspect Software IP strategy takes advantage of
the openness and ubiquity of Voice over Internet
Protocol (VoIP)” and that it “gives customers the
choice between embracing IP to address
increasingly dynamic processes and practices with
its open Unified IP Contact Center product line
or to migrate over time to IP with its Signature
product line.”

Serial No. 78925898
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“Our Unified IP strategy
recognizes the evolution,
standardization and market
acceptance of IP, notably SIP, as
well as the maturation and market
acceptance of a unified contact
center offering. And we are
seeing increased market
opportunities as a result of this
natural convergence,” said Gary
Barnett, chief technology officer
and executive vice president of
technical services of Aspect
Software. “Additionally, as this
convergence occurs, we uniquely
understand that businesses are
demanding a choice of IP plumbing:
open source or closed source IP
and Aspect Unified IP clearly
meets this need.”

6. A press release, dated December 21, 2006, in the
VoIP News website (voip-news.com) with the
following announcement: “IBM and 3Comm to
Deliver Unified IP Telephony Suite for Small and
Mid-Size Business.” The proposed venture will
allow users to “integrate IP telephony
capabilities” with business applications.

7. An excerpt from a registration form for a webinar
in the TechRepublic website (techrepublic.com)
entitled “Migrating Mobile Services to a Unified
IP Infrastructure.” The webinar reviews ways in
which mobile operators can offer all of their
services over a unified IP transport
infrastructure.

8. An announcement regarding the “Cisco Unified IP
Conference Station and IP Phone Vulnerabilities”
published on February 22, 2007 in the SecuriTeam
website (securiteam.com).3 This document provides
a warning regarding security issues in Cisco’s
Unified IP Conference Station and instructions

3 The announcement was also made available in another website
(http://seclists.org) whose identity is not clear. It could be
WatchFire or Insecure.org.
Serial No. 78925898
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for working around it. Cisco’s Unified IP Phones
provide integrated phone service for networks.

9. An excerpt from the TWAcomm.com website
advertising the sale of “Cisco 7900 Unified IP
Phones: Voice Over IP phones used with Cisco’s
Unified Communications system.”

10. A press release, dated November 16, 2006, in the
WebEx website (webex.com) announcing “Litescape
Technologies to Deliver Unified IP Communications
Applications Through WebEx Connect.” The press
release announces collaboration between Litescape
Technologies and WebEx to link desktop
applications with communication applications in
an IP-based network.

In addition, the Examining Attorney submitted excerpts
from websites using the word “unified” to describe
integrated communication networks, including communication
networks for telecommunication contact centers. Also, the
Examining Attorney submitted excerpts from websites using
the term IP in connection with Internet Protocol
communications.
On the other hand, applicant contends that UNIFIED IP
is not merely descriptive for the following reasons:
1. UNIFIED IP is not descriptive of customer contact
center hardware and software, as well as
telephony equipment, simply because Internet
Protocol may be utilized as a means of
communication and interconnection by the hardware
and software. In other words, because there are
Serial No. 78925898
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multiple communication protocols that may be
encompassed by the description of goods,
“Internet Protocol communication is NOT a
limitation on the goods sold under the present
mark for which registration is sought.”4
(Emphasis in the original).
2. UNIFIED IP has multiple meanings;
3. Applicant’s use of UNIFIED IP in association with
other marks has strengthened the consumer’s
perception of UNIFIED IP as a mark;
4. The term UNIFIED IP is so broad that it does not
directly convey any meaning; and,
5. The term UNIFIED IP is not in common usage by
others to describe customer contact centers.5
Applicant submitted evidentiary exhibits with both its
appeal brief and its supplemental appeal brief. The
Examining Attorney objected to the exhibits that were not
previously made of record during the prosecution of the
application. “The record in the application should be
complete prior to the filing of an appeal.” Trademark Rule
2.142(d), 37 CFR §2.142(d).6 With respect to the exhibits

4 Applicant’s Brief, p. 6; Supplemental Brief, pp. 11-12.
5 Applicant’s Brief, p. 4; Supplemental Brief, pp. 9-10.
6 The Examining Attorney requested the Board to remand the
application so he could submit additional evidence pursuant to
Trademark Rule 2.142(d) (“After an appeal is filed, if the
Serial No. 78925898
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that were not made of record during the prosecution of the
application, the objection is sustained and the exhibits
have not been considered. See In re Fitch ICCA Inc., 64
USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Continental
Records, Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB 2002).
Moreover, the Examining Attorney’s objection to the
list of registrations incorporating the word “Unified”
produced from an unidentified source is also well taken.
The mere submission of a list of registrations or a copy of
registrations from a private search report does not make
the registrations part of the record. Third-party
registrations may be made of record only by filing copies
of the registrations made from USPTO records. In re Ruffin
Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). Even if
the list of registrations were considered, they would have
very little probative value because they are not complete
copies of the registrations, and therefore there is no way
of knowing whether the registrations issued with, or
without, a disclaimer of the exclusive right to use the
word “Unified.”

appellant or the examiner desires to introduce additional
evidence, the appellant or the examiner may request the Board to
suspend the appeal and to remand the application for further
examination”). The Board granted the Examining Attorney’s
request.
Serial No. 78925898
10
Finally, we note that applicant attached copies of
exhibits to its briefs that had been previously submitted
during the prosecution of the application. Because the
documents were already of record, their submission with the
briefs were unnecessary. See ITC Entertainment Group Ltd.
v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-2023
(TTAB 1998) (submission of duplicative papers is a waste of
time and resources, and it is a burden on the Board).
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the goods for which registration
is sought and the context in which the term is used, not in
the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the question is not whether someone presented
only with the mark could guess what the products are.
Rather, the question is whether someone who knows the
products will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d
1314, 1316-1317 (TTAB 2002); In re Patent & Trademark
Serial No. 78925898
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Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product characteristics the term
indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety. As
argued by applicant, common words may be descriptive when
standing alone, but when used together in a composite mark,
they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989). However, if each component
retains its descriptive significance in relation to the
services, without the composite term creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., Inc., 64 USPQ2d at
1317-1318.
Serial No. 78925898
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We start our analysis of the registrability of UNIFIED
IP by inquiring whether UNIFIED IP describes a quality,
characteristic, function, feature or purpose of “customer
contact center hardware and software,” not whether we can
guess what the products are by looking at the mark. The
evidence shows that UNIFIED IP directly describes a
communication network utilizing Internet Protocol (e.g.,
IBM and 3Comm formed a joint venture to develop a “Unified
IP Telephony Suite for Small and Mid-Size Business” to
“integrate IP telephony capabilities” with business
applications; the webinar “Migrating Mobile Services to a
Unified IP Infrastructure” reviews the ways in which mobile
operators can offer all of their services over a unified IP
transport infrastructure; Cisco sells unified IP phones to
provide integrated phone service for networks; and,
Litescape Technologies and WebEx formed a joint venture to
deliver unified IP communications by linking desktop
applications with communication applications in an IP-based
network).
Applicant’s UNIFIED IP mark identifies computer
hardware and software for initiating, integrating, routing,
controlling and monitoring inbound and outbound customer
contact through multiple channels including VoIP telephone
contacts, email, and web contacts. As evidenced by
Serial No. 78925898
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applicant’s website, this encompasses Internet Protocol
channels. Applicant’s UNIFIED IP products were designed
and built around Internet Protocol technology (e.g.,
“Architected around Internet Protocol standards, the Aspect
Software Unified IP™ Contact Center products bring extreme
flexibility to dynamic organizations”; “specifically
created to unite multiple capabilities in single platform”;
and “Unified IP Contact Center products allow customers
their choice of transport – open source IP, closed source
IP or traditional voice”). Indeed, applicant’s UNIFIED IP
products use VoIP and other traditional or IP-based
telephony.
The fact that applicant’s customer contact center
hardware and software encompasses more than communications
derived from Internet Protocol channels does not render the
mark suggestive. It is not necessary that a term describe
all of the purposes, functions, characteristics or features
of a product to be considered merely descriptive; it is
enough if the term describes one significant function,
attribute or property. In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark
may be merely descriptive even if it does not describe the
‘full scope and extent’ of the applicant’s goods or
services,” citing In re Dial-A-Mattress Operating Corp.,
Serial No. 78925898
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240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In
re Gyulay, 3 USPQ2d at 1010.
The examining attorney’s evidence also shows that
applicant’s competitors use the term “unified” to describe
hardware and software with the capability of handling
multiple functions or types of communication.
When the terms “unified” and IP are combined together,
as applicant has combined them, they retain their
descriptive meanings in relation to the goods (hardware and
software used in connection with inter alia Internet
Protocol communications), without the composite term
creating a unique or incongruous meaning.
With respect to applicant’s argument that the term
UNIFIED IP has multiple meanings, it is well settled that
descriptiveness must be determined in relation to the goods
for which registration is sought. Therefore, the fact that
a term may have a different meaning(s) in a different
context is not controlling. See In re Chopper Industries,
222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979); In re Champion International
Corp., 183 USPQ 318, 320 (TTAB 1974). As discussed above,
UNIFIED IP has meaning as a communication network utilizing
Internet Protocol. There is no double entendre or
incongruity in applicant’s use of the term “unified IP.”
Serial No. 78925898
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Applicant also contends that its “prior use of UNIFIED
IP as a trademark, and in association with its other marks,
has strengthened the customer’s perception that UNIFIED IP
is not merely descriptive of customer contact centers.”7
Applicant appears to be arguing that its use of UNIFIED IP
as a trademark has acquired distinctiveness. This argument
does not address the issue of whether the term at issue is
merely descriptive. Further, the application does not
claim the benefits of Section 2(f).
Finally, applicant argues that “the mark sought to be
registered is not in common usage by others as a
description of the same or related goods.”8 First, the
evidence of record contradicts applicant’s contention.
Moreover, the fact that an applicant may be the first and
only user of a merely descriptive term does not justify
registration if the only significance conveyed by the term
is merely descriptive. See In re Sun Microsystems, Inc., 59
USPQ2d 1084, 1087 (TTAB 2001); In re Acuson, 225 USPQ 790,
792 (TTAB 1985).

7 Applicant’s Brief, pp. 8-9; Applicant’s Supplemental Brief, pp.
14-15.
8 Applicant’s Brief, p. 4.
Serial No. 78925898
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In view of the foregoing, we find that the term
UNIFIED IP, if used in connection with customer contact
center hardware and software, is merely descriptive.
Decision: The refusal to register is affirmed.