Cardiff Software, Inc.

Trademark Trial and Appeal Board

Aug 4, 2003

No. 78039026 (T.T.A.B. Aug. 4, 2003)

Mailed: August 4, 2003
Paper No. 11
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cardiff Software, Inc.
________
Serial No. 78/039,026
_______
John M. Kim of Gray Cary Ware & Freidenrich LLP for Cardiff
Software, Inc.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Hohein and Bucher, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Cardiff Software, Inc. has filed an application to
register the term "AUTOMERGE PUBLISHER" for "computer software
used to merge source data with form templates for delivery of
pre-filled forms."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "AUTOMERGE PUBLISHER" is merely descriptive of them.
1 Ser. No. 78/039,026, filed on December 12, 2000, which alleges a date
of first use anywhere and in commerce of September 21, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78/039,026
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Ser. No. 78/039,026
3
Applicant argues in its brief that the term "AUTOMERGE
PUBLISHER" is suggestive rather than merely descriptive of its
computer software. Among other things, applicant asserts that
"the term 'publisher' is defined as 'a person or corporation
whose business is publishing" and maintains that, inasmuch as a
"related definition provided by the Examining Attorney is 'one
that is engaged in publishing printed material," the "word 'one'
naturally refers to a person" (underlining by applicant).
Applicant contends, in view thereof, that because its goods "are
neither a person nor a corporation," "the relation of the term
'publisher' to computer software is not immediately apparent to a
consumer, especially when this word is used in connection with
the term 'AutoMerge' and the mark is properly considered in its
entirety."
In addition, applicant observes that "there is no
record of any [third-party] use of 'AutoMerge Publisher' to
describe a software program used to create pre-filled forms and
personalized response documents." "Even more compelling,"
according to applicant, "is the fact that the Examining Attorney
could not find a single reference to 'AutoMerge Publisher' for
any software program" as a result of his search of the "NEXIS"
database (emphasis by applicant). Thus, while admitting that
"the Examining Attorney has found articles suggesting that the
word 'automerge' may be descriptive of software programs which
are all quite different in function and form than applicant's
software," applicant insists that the Examining Attorney "has yet
to find one article where the applicant's mark AUTOMERGE
Ser. No. 78/039,026
4
PUBLISHER has been used in a descriptive sense." There being "no
evidence that anyone that manufactures a similar software product
would need to use the mark AUTOMERGE PUBLISHER to describe their
product, applicant asserts that "this mark should be considered
at least suggestive" when used in connection with its goods
because "[t]he competitive needs of others are not damaged by the
registration of a composite mark that will never be used by
others to describe their goods."
Applicant further argues that, "[e]ven assuming
arguendo that 'automerge' is descriptive of a certain type of
software program, the overall composite mark ... AUTOMERGE
PUBLISHER is not immediately descriptive of a software program
which creates pre-filled forms and personalized response
documents." In particular, applicant urges that:
When a consumer sees a mark, it is well
recognized that they see and consider the
mark as a whole. According to the Examining
Attorney, a reasonable consumer would see the
word AutoMerge and dissect and understand
this composite word to be, in the first part,
an acronym for "automatic" which is defined
in [the excerpt of record from] a computer
science dictionary as: "a wide variety of
devices that perform unattended operation."
This presupposes that a reasonable consumer
would be familiar with a definition found in
a computer science dictionary. Although this
software is used in a computer, the average
consumer of this software is not a computer
scientist and is not familiar with
definitions contained within a computer
science dictionary. At the very best, a
consumer may understand "automatic" to mean
"largely or wholly involuntary", which is the
Webster's dictionary definition and commonly
understood definition of this word. The next
step a consumer would allegedly embark upon
is to define the word "merge" to mean "to
combine or unite." The final step a consumer
Ser. No. 78/039,026
5
would allegedly embark upon is to define
"publisher" as "one that is engaged in
publishing printed material." Thus, the
defined meaning of AUTOMERGE PUBLISHER is "a
largely or wholly involuntary combining or
uniting by one that is engaged in publishing
printed material." After pondering and
defining these individual words, a consumer
is supposedly able to identify a function,
feature or characteristic of the underlying
goods. However, even after this improper
dissection and careful consideration, it is
not clear what function, feature or
characteristic is identified by the above
description. .... Every function [of
applicant's software] is controlled by the
user which is carried out by the algorithms
of the software code. Finally, as mentioned
above, since there is no person or
corporation doing the publishing (it is a
software program), the use of the term
"PUBLISHER" is totally incongruous. All of
these factors support the argument that the
subject mark is suggestive, rather than
merely descriptive.
The Examining Attorney, on the other hand, maintains
that the issue of mere descriptiveness of the term "AUTOMERGE
PUBLISHER" must be determined "from the standpoint of actual or
prospective purchasers or users of the Applicant's goods." Such
individuals, according to the Examining Attorney, are those "who
deal with the collecting, analyzing and processing [of] various
pieces of data and information [and] who must join all of this
information together as a single document." These individuals,
the Examining Attorney contends, will immediately perceive the
merely descriptive significance of the term "AUTOMERGE PUBLISHER"
as such term is used in connection with applicant's goods.
In particular, applicant's specimens of use and its
advertising literature demonstrate that it invariably uses the
term "AUTOMERGE PUBLISHER" in the format "AutoMerge Publisher,"
Ser. No. 78/039,026
6
thereby making the constituent elements of such term readily
apparent to customers for and users of its goods. Rather than
improperly dissecting applicant's asserted mark, the Examining
Attorney insists that, due to the manner of use thereof,
consumers for applicant's goods would immediately understand that
the term "AUTOMERGE PUBLISHER" merely describes a characteristic
or feature of the product. Specifically, as explained by the
Examining Attorney:
[T]he term, AUTO, in relation to the
computer industry, "refers to a wide variety
of devices that perform unattended
operation," and merely describes ... a
characteristic of the applicant's goods--
i.e., that the goods perform specific tasks
without human intervention. See Freedman,
Alan, The Computer Glossary, p. 23 (7th ed.
1995). The term, MERGE, is defined as "to
combine or unite: merging two sets of data,"
and merely describes ... a characteristic of
the applicant's goods--i.e., that the goods
allow the user to combine sets of data. In
the instant case, the combined terms, AUTO
and MERGE, merely describes [sic] ... a
characteristic of the applicant's goods--
i.e., that the goods allow the user to
combine its data with the data already in a
database without human involvement.
As further evidence of the mere descriptiveness of the
term "AUTOMERGE," the Examining Attorney points to excerpts from
articles retrieved from his search of the "NEXIS" database "in
which the term, AUTOMERGE or AUTO MERGE[,] appeared in twenty
stories."2 Although many of the excerpts are from wire services
2 While the search request of "('AUTOMERGE' OR 'AUTO MERGE') AND NOT
CARDIFF" did indeed find 20 stories, excerpts from only 11 of the 20
articles located through such request were printed and made part of
the record.
Ser. No. 78/039,026
7
and thus are of limited probative value,3 the most pertinent of
the other excerpts are set forth below (emphasis added):
"The scanner also includes an automerge
feature that stitches together two pieces of
[a] large image." -- InfoWorld, July 19,
1993;
"The unit also includes Jam Sync and
Auto Merge, a feature that merges MIDI data
from two sources into one file." -- MacWEEK,
June 25, 1991; and
"Scotland is already host to a species
of what locals call 'liveware' -- a database
that spreads autonomously on Macintosh
systems. When two computers are connected,
the 'liveware' on one searches out databases
on the other, locates the one it wants and
then "auto merges" its data in a sort of
cybernetic date-rape." -- Washington Post,
May 6, 1990.
Such evidence, the Examining Attorney contends, shows that
combining the descriptive terms "AUTO" and "MERGE" to form the
combination "AUTOMERGE" "creates no incongruity" and thus "the
mark remains merely descriptive."
With respect to the term "PUBLISHER," the Examining
Attorney, besides relying on the definition thereof noted by
applicant, additionally cites definitions of the following two
terms, which are attached to his brief, from an on-line edition
of the Merriam-Webster Dictionary: (i) "desktop publishing,"
3 Specifically, five of the 11 excerpts made of record are from either
"Business Wire" or "PR Newswire." Such excerpts are of limited
probative value inasmuch as there is no evidence that the stories set
forth therein have actually appeared in publications of general
circulation in the United States. It therefore cannot be assumed that
the excerpts from such articles have had any material impact on
consumer perception or attitude as to the meaning of the term
"AUTOMERGE" or its equivalent "AutoMerge." See, e.g., In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1555 n. 6 (TTAB 1987) and In re
Men's Int'l Professional Tennis Council, 1 USPQ2d 1917, 1918-19 (TTAB
1986).
Ser. No. 78/039,026
8
which is defined as "the production of printed matter by means of
a desktop computer having a layout program that integrates text
and graphics," and (ii) "electronic publishing," which is listed
as signifying "publishing in which information is distributed by
means of a computer network or is produced in a format for use
with a computer."4 Based on such entries, he argues that
(footnotes omitted):
The ... term, PUBLISHER, is a commonly used
term in the computer software industry and is
regularly used as a modifier of another
computer term, i.e., desktop publisher,
electronic publisher, web publisher, etc.
The term, PUBLISHER, is commonly used in the
computer industry to describe a feature,
function or characteristic of a particular
computer software program ... which allows
for the retrieving, indexing, storing,
creating, assembling and printing of
documents.
4 Although the submission thereof is technically untimely under
Trademark Rule 2.142(d), the Examining Attorney's request that the
Board "take judicial notice of all on-line dictionary definitions as
indicated" in his brief is granted inasmuch as the Board may properly
take judicial notice of on-line dictionary definitions where, as here,
it is apparent that the on-line dictionary is also available in book
form. Compare In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.
3 (TTAB 2002) with In re Total Quality Group Inc., 51 USPQ2d 1474,
1476 (TTAB 1999). Moreover, and in any event, we judicially notice in
this regard that The American Heritage Dictionary of the English
Language (4th ed. 2000) similarly defines "desktop publishing" as
connoting "t]he design and production of publications using personal
computers with graphics capability." The same dictionary, in
pertinent part, also lists "electronic" as "[o]f, relating to, or
produced by means of electronics: electronic navigation; electronic
books" and sets forth "publishing" as "[t]o prepare and issue (printed
material) for public distribution or sale" and "[t]o issue a
publication." It is well established that the Board may properly take
judicial notice of such dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. No. 78/039,026
9
In addition, the Examining Attorney "notes that the
Applicant's own evidence supports the argument that its mark is
[merely] descriptive of its goods." Specifically, applicant's
advertising literature contains the following discussions of the
capabilities of its software (emphasis added):
AutoMerge Publisherï›› is a powerful new way
to create pre-filled forms and personalized
response documents and deliver them
automatically using print, Fax, eMail and
Adobe PDF.
Using the point & click Form Designer, you
can quickly design "merge templates", that
combine with variable data, text, barcodes
and graphics from existing database and XML
applications or as an automated extension to
your TELEform Information Capture
application.
....
AutoMerge Publisher can create a wide range
of response documents and forms including
confirmations, membership cards, coupons and
certificates. ....
AutoMerge Publisher supports Adobe ePaper
Solutions and XML standards. Through support
for Adobe PDF, merged forms and documents
have the look of 4-color printed materials,
but can be digitally signed and submitted
online. AutoMerge Publisher's XML
integration uses standard HTML forms, XML
data streams and processing rules to trigger
the creation and delivery of merge forms or
documents.
....
You may wish to create a system that
automatically sends merged content in a
specific order .... Or you may want to
connect your merge templates with hand-held
devices, legacy applications or ERP systems
using data streams to create high-quality
invoices, purchase orders or statements.
Ser. No. 78/039,026
10
In a similar vein, several Internet search results refer to
applicant's "AutoMerge Publisher" software as "a powerful way to
implement automated form merge" (emphasis added). Thus, in the
context of applicant's goods, the Examining Attorney maintains
that customers for and users of such software "will have no
problem determining that AUTOMERGE PUBLISHER relates to the
collecting of various pieces of data and information together for
the purpose of printing, sending, receiving or 'publishing' the
data" and thereby merely describes a characteristic or feature of
the goods.
Finally, the Examining Attorney correctly observes
that:
It is well-settled law that the fact [that]
an applicant may be the first and only user
of a merely descriptive ... designation does
not justify registration if the term is
merely descriptive. In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983). Additionally, the fact that a term is
not found in the dictionary is not
controlling on the question of
registrability. In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In
re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977).
In view of the above, the Examining Attorney concludes that the
evidence of record, including dictionary definitions, "NEXIS"
excerpts and applicant's advertising literature, is sufficient to
demonstrate that the term "AUTOMERGE PUBLISHER" merely describes
a significant characteristic or feature of applicant's goods.
We agree with the Examining Attorney that, when
considered in its entirety, the term "AUTOMERGE PUBLISHER" is
merely descriptive of applicant's "computer software used to
Ser. No. 78/039,026
11
merge source data with form templates for delivery of pre-filled
forms." We judicially notice, in this regard, that The American
Heritage Dictionary of the English Language (4th ed. 2000) sets
forth the prefix "auto-" as meaning in relevant part "automatic,"
which in turn is defined as an adjective connoting in pertinent
part "1a. Acting or operating in a manner essentially independent
of external influence or control: an automatic light switch ....
b. Self-regulating: an automatic washing machine." Thus, even
if the typical purchasers and users of applicant's goods would
not be computer scientists and therefore would not be familiar
with a technical definition of "auto" from a computer science
dictionary as referring to "a wide variety of devices that
perform unattended operation," it is still the case that they
would know that the ordinary or everyday meaning of such term is
"automatic." See In re Time Solutions Inc., 33 USPQ 1156, 1158
(TTAB 1994) [mark "YOUR HEALTH INSURANCE MANAGER" for software
programs for personal record keeping and processing of medical
records, health insurance and claims found merely descriptive
inasmuch as consumers, although perhaps unfamiliar with computer
dictionary meaning of word "manager," would certainly know the
ordinary or everyday meaning of such word and, in consequence
thereof, "the mark will immediately convey to them information
concerning a significant feature or function of applicant's
programs, namely, that they manage, i.e., handle with skill,
personal health insurance matters"].
Consequently, and in light of the previously indicated
meanings of the words "merge" and "publisher," which to reiterate
Ser. No. 78/039,026
12
The American Heritage Dictionary of the English Language (3rd ed.
1992) respectively defines as "to combine or unite: merging two
sets of data" and "one that is engaged in publishing printed
material," it is readily apparent that to customers for and users
of applicant's goods, the term "AUTOMERGE PUBLISHER" conveys
forthwith, without speculation or conjecture, that applicant's
computer software is used to publish printed material, such as
pre-filled forms, by automatically combining or uniting source
data with form templates. Moreover, consumers of applicant's
goods are also likely to be familiar with such terminology as
"desktop publishing" and "electronic publishing," given their
need for software that, inter alia, can publish such printed
material as pre-filled forms which incorporate information from a
source or sources of data. To those consumers, the term
"AUTOMERGE PUBLISHER" immediately conveys information as to a
significant characteristic or feature of software that
automatically merges a particular source of data into a user-
determined format for further use or distribution. There is
nothing in the combination of the terms "auto," "merge" and
"publisher" into the term "AUTOMERGE PUBLISHER" which is
incongruous, ambiguous or otherwise "not immediately apparent" as
contended by applicant.
Admittedly, it is possible, as applicant argues, for
individually descriptive words to be combined to form a valid,
registrable mark which, as a whole, is not merely descriptive.
However, as indicated by the Board in, for example, In re Medical
Ser. No. 78/039,026
13
Disposables Co., 25 USPQ2d 1801, 1804 (TTAB 1992), in order for
such to be the case:
[T]he mere act of combining does not in
itself render the resulting composite a
registrable trademark. Rather, it must be
shown that in combination the descriptiveness
of the individual words has been diminished,
[such] that the combination creates a term so
incongruous or unusual as to possess no
definitive meaning or significance other than
that of an identifying mark for the goods.
See In re Calspan Technology Products, Inc.,
197 USPQ 647 (TTAB 1977).
In this instance, applicant has not combined the descriptive
terms "auto," "merge" and "publisher" in a bizarre or nebulous
way, such as "AUTOPUBLISHER MERGE" or "MERGE PUBLISHERAUTO."
Instead, the constituent elements of the combined term "AUTOMERGE
PUBLISHER," especially in light of applicant's manner of use
thereof as "AutoMerge Publisher," have a meaning in combination
which is immediately recognizable and identical to that of their
separate connotations.
Thus, nothing in the term "AUTOMERGE PUBLISHER," as
indicated previously, is so incongruous or unusual as to possess
no definitive meaning or significance other than that of an
identifying mark for applicant's goods, nor does such composite
term otherwise possess a new meaning different from that of its
constituent elements. Furthermore, nothing in the composite
term, when used in connection with applicant's goods, requires
the exercise of imagination, cogitation or mental processing or
necessitates the gathering of further information in order for
the merely descriptive significance thereof to be immediately
apparent. Plainly, to customers for applicant's computer
Ser. No. 78/039,026
14
software, such term conveys forthwith that a principal feature or
characteristic thereof is that the goods publish or provide
printed material by automatically merging source data with form
templates to create pre-filled forms. The term "AUTOMERGE
PUBLISHER" is accordingly merely descriptive of applicant's goods
within the meaning of the statute. See, e.g., In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792, 1794-95 (TTAB 1996) [term
"VISUAL DESIGNER" merely describes significant purpose or
function of computer programs which permit programming
applications to be visually designed instead of being written in
a programming language]; and In re Time Solutions Inc., supra.
Decision: The refusal under Section 2(e)(1) is
affirmed.