Bently Nevada Corp.

Trademark Trial and Appeal Board

Apr 11, 2000

No. 75106184 (T.T.A.B. Apr. 11, 2000)

Paper No. 15
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 11, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bently Nevada Corporation
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Serial No. 75/106,184
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Bernhard Kreten for Bently Nevada Corporation
Stanley I. Osborne, Jr., Trademark Examining Attorney, Law
Office 102 (Thomas Shaw, Managing Attorney)
_______
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Bently Nevada Corporation has appealed from the
refusal of the Trademark Examining Attorney to register
MACHINE MANAGER as a trademark for “computer software,
namely, a diagnostic software tool to monitor the status of
rotating shafts primarily for use in power plants and
Ser. No. 75/106,184
2
petro-chemical processing plants.”1 Registration has been
refused pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its identified goods.
The case has been fully briefed; an oral hearing was
not requested.
We reverse the refusal of registration.
Preliminarily, we note that with his appeal brief the
Examining Attorney has submitted a substantial amount of
evidence which had not previously been made of record.
Because applicant has not objected to the late-filed third-
party registrations, NEXIS excerpts and dictionary
definitions,2 and has discussed them in its reply brief,
thereby in effect stipulating to its inclusion, we have
considered this material.3 However, we must express our

1 Application Serial No. 75/106,184, filed May 17, 1996,
asserting a bona fide intention to use the mark in (cont’d.)
commerce. Although applicant indicates in its brief that its
mark has been used in commerce since 1996, an amendment to allege
use has not been filed. Moreover, although in its briefs
applicant has referred to its registrations for other “Manager”
marks, and stated that because of its ongoing use consumers
recognize its “Manager” marks as identifying applicant’s goods,
we do not regard these references as an assertion that its
present mark should be registered under the provisions of Section
2(f). In any event, such a Section 2(f) claim, raised for the
first time in its briefs, would be untimely.
2 The Board may, in any event, take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
3 Applicant did not discuss the web site material, so we have
not treated it as of record.
Ser. No. 75/106,184
3
disapproval of the Examining Attorney’s actions in waiting
until the filing of his brief to submit this evidence. We
are particularly disturbed by his actions since he had an
opportunity to file this evidence as part of his response
to applicant’s request for reconsideration, which had been
filed with applicant’s notice of appeal, and, in fact, the
decision on the request for reconsideration was issued
after applicant had filed its appeal brief. Despite this,
the Examining Attorney’s action on the request for
reconsideration was merely a reiteration, using the
identical words, of the final Office action.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service. In re Venture Lending Associates, 226 USPQ
285, 286 (TTAB 1985).
Applicant has explained that its diagnostic software
is used to monitor the status of
rotating equipment, such as shaft
deflection. In other words,
Appellant’s software monitors changes
in the deflection of a shaft and this
information my be retrieved by the
engineer responsible for maintenance.
If the change monitored by the engineer
is a change which is unwanted, some
action is taken on the engineer’s part
to correct the anomaly. Thus, the
Ser. No. 75/106,184
4
software does not “manage” any
machinery, but rather monitors changes
Ser. No. 75/106,184
5
which occur in rotating shafts in large
pieces of industrial equipment.
Brief, p. 4.
The Examining Attorney asserts that MACHINE MANAGER is
merely descriptive because it describes a function of
applicant’s goods, namely, that the software manages, i.e.,
monitors, reports and directs the operation of, machines in
power plants and petro-chemical processing plants. In
particular, the Examining Attorney contends that the term
“manager” is commonly used in the computer industry to
identify computer software that performs certain
management, monitoring, or housekeeping tasks or functions
related to the operation of systems, and that, as used in
the mark, MANAGER immediately conveys to purchasers the
information that the product possesses attributes that
directly relate to monitoring and managing the machines.
In support of his position the Examining Attorney has
submitted various definitions for “manage,” “manager,”
“machines,” “monitor” and “housekeeping,” some of which are
listed below:
Manager: In general, any program that
is designed to perform a certain set of
“housekeeping” tasks related to
computer operation—for example, the
maintenance of files.
On the Apple Macintosh, Manager (with a
capital M) is used in the names of
Ser. No. 75/106,184
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various separate portions of the
computer’s operating system that handle
input, output, and internal functions.
Among these are File Manager, Font
Manager, AppleTalk Manager, Memory
Manager, Window Manager, Menu Manager,
and so on. For example, the File
Manager handles requests to open and
close files, keeps a list of the names
of mounted disks, and so on; the Font
Manager keeps a list of the available
fonts and returns information about the
available font sizes loaded in the
System File, among other things; and
the AppleTalk Manager arbitrates input
and output over the AppleTalk network.4
Machine: a simple device, such as a
lever, a pulley, or an inclined plane,
that alters the magnitude or direction,
or both, of an applied force; a simple
machine.5
As used in connection with software, the definition of
“manager” indicates that it refers to the operating system
of the computer. This definition does not show that
software which is used to monitor or track the status of
equipment such as rotating shafts would be referred to, or
described, by the term “manager.” Further, the Examining
Attorney’s reliance on the definitions of “monitor” (“a
program that observes, supervises, or controls the
activities of other programs”)6 and “housekeeping” (“routine

4 Microsoft Press Computer Dictionary, 2d ed. © 1994.
5 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
6 The Computer Glossary, 7th ed. © 1995. The Examining Attorney
did not submit a copy of this definition but, as noted (cont’d.)
Ser. No. 75/106,184
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tasks and procedures carried out in the functioning of an
operation or system”)7 tend to show the suggestiveness,
rather than the descriptiveness, of MACHINE MANAGER. That
is, if a consumer must first consider the definition of
“monitor” or “housekeeping” and then determine the
connection between those terms and “manager,” the consumer
must obviously undertake the multi-stage reasoning process
that is the hallmark of a suggestive mark. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 10009 (Fed. Cir. 1987).
The Examining Attorney has also submitted the results
of searches of the NEXIS data base for stories containing
the words “manager” and “software,” and “machine” and
“manager,” in proximity to each other. We agree with
applicant that the references retrieved by the searches are
either irrelevant to, or not probative of, the issue before
us. For example, some of the excerpts submitted by the
Examining Attorney merely contain the word “machine” in one
sentence, and the word “manager” in the following sentence:
“Although you might question the
possibility of such a virus, many
“newbies” will simply be terrified by
the prospect of infecting their
machines.
IS managers must be prepared to deal
with the Good Times virus hoax and

previously, the Board may take judicial notice of dictionary
definitions.
7 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser. No. 75/106,184
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other similar ones by reassuring users
as necessary.
“Infoworld,” July 1, 1996
It is clear from other excerpts that the word
“manager” refers to a human being, rather than computer
software:
Through a graphic interface on the
computer screen that actually shows
what is going on inside the vending
machine, the manager can “visit” a
vending machine from the comfort of the
home office by simply pointing and
clicking the computer mouse.
“Beverage World,” October 1996
Sophisticated cutting machines reduce
tool wear by performing crash analyses
before cutting starts. Very little
pressure is needed for cutting, and the
tools “land” softly on the surface,
reducing tool replacement. The
operating hours of each of the tools
can be obtained from the control
computer screen, enabling the machine
manager to replace worn tools before
they can cause any damage to the glass.
“Ceramic Industry,” June 1, 1999
Other excerpts use the term Machine Manager in a
trademark manner, i.e., “Virtual Machine Manager.”
In short, none of the NEXIS evidence proves that
MACHINE MANAGER, as used in connection with applicant’s
identified goods, is merely descriptive.
The third-party registrations submitted by the
Examining Attorney show that various marks containing the
word MANAGER were registered on the Supplemental Register,
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thereby indicating their descriptive nature, or with a
disclaimer of this term. Given that applicant has made of
record its own registrations for the marks DYNAMIC DATA
MANAGER, TRANSIENT DATA MANAGER and DATA MANAGER, all
registered without a disclaimer of MANAGER, at best the
third-party registrations might be used to show that the
Office’s policy with respect to MANAGER marks is
inconsistent. However, it appears to us that the third-
party registrations are for computer software which is
actually used for managing purposes, e.g., RUG MANAGER for
computer software for use in inventory management
applications used in the Oriental rug and carpet industry.8
Applicant’s software, on the other hand, is used to monitor
the status of rotating shafts, rather than to manage them.
For the same reason, the Examining Attorney’s reliance
on In re Time Solutions Inc., 33 USPQ2d 1156 (TTAB 1994) is
misplaced. In that case, the mark YOUR HEALTH INSURANCE
MANAGER was found to be merely descriptive of software
programs for personal record keeping and processing of
medical records, health insurance and claims because
consumers would readily understand applicant’s services,
described in its advertising as “software to manage your
medical records and health insurance,” as being software

8 Registration No. 2,267,889.
Ser. No. 75/106,184
10
that manages health insurance matters. In the present
case, however, there is no evidence that the monitoring of
the status of rotating shifts would be referred to as
managing.
For the foregoing reasons, we find that the evidence
of record fails to prove that MACHINE MANAGER is merely
descriptive of a diagnostic software tool to monitor the
status of rotating shafts primarily for use in power plants
and petro-chemical processing plants.
Decision: The refusal of registration is reversed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board