Domain Logix, Inc.

Trademark Trial and Appeal Board

Dec 17, 2002

No. 75867516 (T.T.A.B. Dec. 17, 2002)

Paper No. 14
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Domain Logix, Inc.
________
Serial No. 75/867,516
Serial No. 75/867,517
_______
Robert A. Voigt, Jr. of Winstead Sechrest & Minick P.C. for
Domain Logix, Inc.
LaVerne T. Thompson, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Sams, Cissel and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has appealed from the Trademark Examining
Attorney’s final refusals, in the above-referenced
applications, to register the marks VIRTUAL PORTAL1 and
1 Serial No. 75/867,516, filed December 9, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 75/867,516 and 75/867,517
2
VIRTUAL DATA PORTAL2 for goods identified, in both
applications, as “computer software used to enable a web-
browser-like interface for providing remote control via a
global or local computer network for supporting monitoring
station components of manufacturing processes within a user
factory.” The ground of refusal in each application is
mere descriptiveness under Trademark Act Section 2(e)(1),
15 U.S.C. §1052(e)(1). We shall decide both of applicant’s
appeals in this single decision.
An initial evidentiary matter requires consideration.
Applicant, for the first time with its appeal brief,
submitted a listing from the Office’s TESS database of
third-party applications (both “live” and “dead”) for
registration of marks which include the word VIRTUAL, or
the word DATA, or the word PORTAL, in connection with Class
9 software products. In her brief, the Trademark Examining
Attorney properly objected to this evidence on the ground
of untimeliness. We sustain the objection, and have given
these materials no consideration. See Trademark Rule
2.142(d).
2 Serial No. 75/867,517, filed December 9, 1999.
Ser. Nos. 75/867,516 and 75/867,517
3
We also note by way of background that, in response to
the Trademark Examining Attorney’s request, applicant
provided the following information regarding its goods:
Applicant’s software, in part, as indicated by
the attachments [printouts from applicant’s
website] is used to facilitate manufacturing
processes such as in the semiconductor
industry. Applicant’s software may allow a
user to control and monitor various tools,
e.g., test chamber, in the factory. Each tool
may be described in terms of an ‘object’ in
reference to the object oriented language. By
describing each tool as an object, various
characteristics of the tool may be monitored
and controlled such as temperature, pressure
and status, by the software. By controlling
and monitoring the tools through the software,
a user may not have to be physically located on
the factory floor to monitor or control the
tool.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose 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). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
Ser. Nos. 75/867,516 and 75/867,517
4
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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 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 its use; that a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[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 Corporation, 226 USPQ
365, 366 (TTAB 1985).
Applying these principles in the present case in light
of the evidence of record, we find that VIRTUAL PORTAL and
VIRTUAL DATA PORTAL, the marks applicant seeks to register,
are merely descriptive of a significant feature or function
of applicant’s software, i.e., of the “web-browser-like
interface” which the software enables. The marks
immediately convey the information that the software
enables a computer-simulated or computer–generated portal
Ser. Nos. 75/867,516 and 75/867,517
5
interface by which the user may access data from the
factory floor in order to monitor and control the
manufacturing process.
The evidence of record shows that, in the context of
computer technology, the word “virtual” means “simulated:
especially simulated by electronic technology.” High Tech
Dictionary.3 See also In re Styleclick.com Inc., 58 USPQ2d
1523, 1526 (TTAB 2001)(“…the term ‘virtual,’ when used in
connection with computers and related goods and services,
means that someone at a computer is able to encounter
certain things in a non-physical or ‘virtual’ manner”).
That the word might have other connotations in the other
(non-computer) contexts cited by applicant is not
controlling. In re Bright-Crest, Ltd., supra.4
3 The URL for this online dictionary as it appears on the
printout made of record by the Trademark Examining Attorney is
www.computeruser.com/resources/dictionary/definition. The
complete definition is: virtual: 1.(Older meaning, before
computer era) Being so in essence or effect although not
officially recognized (for example, a virtual paradise, meaning a
place on Earth that is really like Paradise). 2.(New meaning
created by computer technology) Simulated: especially simulated
by electronic technology (for example, a virtual paradise,
meaning a computer simulation of Paradise, perhaps in a virtual
reality or 3-D gaming space).
4 Also, applicant quotes from (but has not attached a copy
of) another online dictionary definition of “virtual” which
states that the term is “a prefix to ‘virtually’ any
electronic concept or product without regard to the
original meaning of the term.” (TechEncyclopedia
[www.techweb.com/encyclopedia]). Applicant argues that
this definition establishes that “virtual” is “a
superfluous prefix” and an “unnecessary, meaningless
adjective” and that it therefore is not merely descriptive
Ser. Nos. 75/867,516 and 75/867,517
6
The Trademark Examining Attorney also made of record
the following definition from High Tech Dictionary of the
word “portal”: “1. A gateway or entrance. 2. a gateway to
the Internet, which may be a search engine or directory web
page. Examples: Infoseek, Excite, Yahoo, Lycos, AOL. A
web page which is a starting point for web surfing.”5
as it appears in applicant’s marks and as applied to
applicant’s goods. We are not persuaded. The
TechEncyclopedia online dictionary definition from which
applicant quotes appears to be derived from the Computer
Desktop Encyclopedia (9th ed. 2001) published by McGraw-
Hill. That publication’s complete entry for “virtual,” of
which we take judicial notice, is:
An adjective that expresses a condition without
boundaries or constraints. It is often used to define
a feature or state that is simulated in some fashion.
For example, one of the first uses of the term was for
“virtual memory,” in which memory is saved to disk and
swapped back and forth as needed, thus memory is
essentially “simulated on disk.”
However, the term has become such a fashionable
computer word that it may be a prefix to “virtually”
any electronic or Internet-related concept or product
without regard to the original meaning of the term.
That the word might be used in various ways and with various
meanings in connection with computers, computer software and
computer networks does not mean that the term no longer has a
merely descriptive meaning as applied to such goods, nor that it
has become an inherently distinctive term for purposes of
trademark law.
5 [www.computeruser.com/resources/dictionary/definition].
Regarding the word “gateway” which appears in this definition of
“portal,” applicant in its brief cites to and quotes (but does
not submit a copy of) the following definition of “gateway” from
Webster’s New World Dictionary of Computer Terms (7th ed. 1999):
“a means by which users of one computer service or network can
access certain kinds of information on a different service or
network; [also,] a device that connects two dissimilar local
area networks (LANs) or connects a local area network to a wide-
area network (WAN).” We reject as inapposite and unpersuasive
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7
Applicant, in its responses to Office actions and in its
brief, quotes from (but does not attach copies of) the
following similar definitions of “portal": “a page on the
Web that attempts to provide an attractive starting point
for Web sessions; examples include Yahoo and Netscape’s
NetCenter” (Webster’s New World Dictionary of Computer
Terms (7th ed. 1999)); and “a web ‘supersite’ that provides
a variety of services including web searching, news, white
and yellow pages directories, free e-mail, discussion
groups, online shopping and links to other sites”
(TechEncyclopedia [www.techweb.com/encyclopedia]).
Based on these dictionary definitions of “portal,”
applicant argues that the term “may be defined as” a
general-purpose Web site such as Yahoo and NetCenter
through which computer users may access the Internet, and
that because applicant’s software does not pertain to or
involve such a Web “supersite” or portal, the word “portal”
is not merely descriptive as applied to applicant’s
software. However, we are not persuaded that “portal” is
as narrowly defined as applicant argues.
applicant’s argument that because applicant’s software does not
perform these specific “gateway” functions and thus does not
serve as a “gateway,” the word “portal” is not merely descriptive
of applicant’s software.
Ser. Nos. 75/867,516 and 75/867,517
8
Although Web supersites like Yahoo are general portals
which serve as access points to the general Internet, the
record also shows that a “portal” can be any interface
between the user and specific types or sources of data,
including proprietary, intra-company data. For example, a
“corporate portal” is:6
An internal Web site (intranet) that provides
proprietary, enterprise-wide information to
company employees, as well as access to
selected public Web sites and vertical-market
Web sites (suppliers, vendors, etc.) It
includes a search engine for internal documents
and the ability to customize the portal page
for different user groups and individuals. It
is the internal equivalent of the general-
purpose portal on the Web.
The NEXIS evidence submitted by the Trademark Examining
Attorney likewise demonstrates descriptive usage of
“portal” to refer to user/data interfaces in contexts other
than Yahoo-like Web supersites:
HEADLINE: What’s your company policy on
portals?
BODY: …one that goes beyond buttons and menus)
to directly support personalised information
delivery. This is not easy to achieve but,
once achieved, it is very easy to sell. A
defining characteristic of a workspace portal
is that it sells itself. Given a choice
between a workspace portal and a conventional
6 McGraw-Hill Computer Desktop Encyclopedia (9th ed. 2001) (from
which the TechEncyclopedia definition of “portal” quoted by
applicant appears to be derived; see supra at footnote 4).
Ser. Nos. 75/867,516 and 75/867,517
9
GUI or web browser interface, choosing the
portal will be a ‘no brain’ decision.
- Telecommunications; International Edition
(October 2000);
…specific needs, instead providing generic
information that may or may not have been
relevant to the receiver. By contrast, the
Internet makes the information readily
available, and allows it to be tailored to
individual needs. Each employee can receive
real-time customized management information
through a web browser, any time, anywhere.
These personal portals effectively provide a
single and instant picture and create a
fundamental change by allowing every member of
the company to manage their own performance
against clear, organization-wide strategic
priorities.
- Corporate Finance (September 2000); and
For the first time an infrastructure is
available through which managers at all levels
within the bank can receive information within
time frames that will allow them successfully
to act and influence future performance.
System architectures (available from leading
vendors) now integrate web browsers and portals
fed from internal data warehouses, operational
systems and external data feeds, giving
managers online access to the complete range of
information necessary to understand their
operating performance.
- The Banker (July 1, 2000).
The NEXIS evidence also shows that there is a class of
software known as “portal software,” the function of which
is to enable a portal interface between users and the data
they need to access:
In addition, eMation’s client-side portal
software includes interfaces to enterprise
Ser. Nos. 75/867,516 and 75/867,517
10
systems such as billing, help desk, inventory
and asset management.
- Network World (October 15, 2001);
Orion’s Concerto medical applications portal
software – which Hutt Valley is laying over
Orion’s soprano applications such as discharge
summaries – provides single log-in access to
multiple hospital information systems.
- Infotech Weekly (October 15, 2001);
GE Medical last week also partnered with
Corechange Inc. to integrate Corechange’s
Coreport portal software into hospital systems.
The goal is to create a single sign-on system
that manages doctor, nurse, and clinician
access to private patient records.
- Informationweek (October 1, 2001);
…plans to have the portal in full production by
2004. IT services vendor EDS late last month
won a $9 million, seven-month contract to help
design and run the portal pilot. EDS will host
the system, using Computer Associates’ Jasmine
portal software. EDS is performing the portal
work in conjunction with its ongoing contract
to build and operate the Navy Marine Corps
Intranet, an IP converged network that will
support voice, video and data.
- InternetWeek (October 8, 2001);
Instead of using only Microsoft’s Windows
operating system to get company information,
software makers are promoting “portal” software
that works with a Web browser to let workers
get often-used data through any device.
Armonk, N.Y.-based IBM said its product will
offer more capabilities in an out-of-the-box,
general-purpose portal.
- Los Angeles Times (December 28, 2000); and
In January, the county rolled out a data
warehouse and data mart that can give
researchers and agency officials detailed
reports via a Web browser. With portal
software from Viador as its front end, the
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system is replacing a variety of green-screen
legacy systems.
- Infoworld (November 22, 1999).
Based on this evidence, we find that applicant’s
software, the stated function of which is to enable an
interface by which users may access factory floor data, is
portal software. The word PORTAL in applicant’s marks
immediately conveys the fact that the “interface” enabled
by applicant’s software is a portal interface. Applicant’s
argument that “portal” has no descriptive significance and
is inherently distinctive as applied to applicant’s
software simply is not persuasive.
The evidence of record also establishes that “data
portal” is simply a portal by or through which data, of
whatever type, is accessed and/or delivered.
The first e-business strategy leverages the
company’s own Internet capabilities and
content-rich Web site. Web sites such as
Avnet’s link customers, suppliers, other
stakeholders, and employees, and are used to
present information, handle sales transactions,
and provide customer service; intranets and
enterprise data portals link employees and give
them more access to data; and extranets improve
information flow among business partners.
- Electronic News (May 15, 2000);
Headline: Proof of portals – eWEEK labs cuts
through the portal confusion to determine how
and how well portals manage corporate knowledge
Body: Companies looking at portals will have
to clearly define the benefits of the easy
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access to organized data that portals can
bring.
- eWEEK (May 15, 2000);
A new data portal model is also emerging as
companies increasingly utilize the Internet to
exchange multi-formatted business data. San
Diego-based bTrade offers data transformation
as part of its standard transport offering for
a flat monthly fee of $90. bTrade customers
download a free data portal client over the Web
that supports data transformation…
- Electronic Commerce World (April 2000);
If the trial is successful, the company’s
subscribers will have access to GiantBear.com’s
custom local and national content, e-commerce
services and alerts from their wireless
devices. “The team at GiantBear will be our
data portal providers as well as our partners
in delivering a uniquely customized data
product to our customers, whether it’s the
local ski report in Lake Placid or where the
fish are biting in Minnesota,” said Richard
Ekstrand, president and chief executive officer
of RCC.
- Radio.comm Report (May 8, 2000);
Crane said he hoped the merger would help
create a comprehensive data portal. In the
same way that money market funds have been
increasingly sold in fund supermarkets rather
than as stand-alones, iMoneyNet will provide
IBC’s fund tracking services along with a
variety of other capabilities on the Web, Crane
said.
- The Bond Buyer (April 8, 2000);
UPM, Jproxyma, Web Projector, and Model Wiz
exhibit great synergy and provide a powerful
end-to-end solution for several existing and
about-to-explode markets such as the emerging
Internet appliances and wireless data portal
markets.
- Online Product News (April 2000); and
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…need or want directly to your desktop in the
form of a customizable news ticker. But rather
than relying on advertising to support the
product, DigiPortal charges a one-time $34.95
fee for the software, and you select only the
information that’s important to you. There are
no ads, banners, or required data portals.
- Computer Shopper (February 1, 2000).
The portal interface enabled by applicant’s software
is a data portal, i.e., a portal which provides the user
with access to data from the factory floor. As applied to
applicant’s goods, PORTAL and DATA PORTAL have essentially
the same meaning, and they both merely describe a feature
of the software, i.e., that it enables an interface by
which the user may access targeted data.
Applicant’s marks VIRTUAL PORTAL and VIRTUAL DATA
PORTAL simply combine the merely descriptive word VIRTUAL
with the merely descriptive terms PORTAL and DATA PORTAL.
We are not persuaded by applicant’s contention that the
merely descriptive significance of any of these terms is
negated or lessened by virtue of such combination, or that
such combination results in a coined, arbitrary,
incongruous or otherwise inherently distinctive composite.
VIRTUAL PORTAL and VIRTUAL DATA PORTAL are not terms that
were coined by applicant; the NEXIS and Internet evidence
of record shows numerous prior uses by others of these
Ser. Nos. 75/867,516 and 75/867,517
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terms in a merely descriptive manner, as in the following
examples (emphasis added):
…UCAR’s [University Corporation for Atmospheric
Research] integrated data management plan
occurs in a context of significant efforts by
other organizations to provide portals,
catalogs, and gateways to environmental and
atmospheric data resources… A fundamental
issue is how UCAR should interface with these
other efforts. Two extreme approaches would
be… The first extreme would standardize access
to UCAR’s diverse data assets and services by
creating a single UCAR format and virtual data
portal, independent of discipline boundaries or
user requirements, making it possible to
monitor usage, standardize protocols, and
enforce metadata standards and policies on an
institution-wide basis.
- www.cgd.ucar.edu/dmwg/strategic.plan.html;
Welcome to the Clark County, Indiana GenWeb
site: Your virtual portal to family history
research resources for Clark County, IN,
created in 1801… In June 1996, a group of
genealogists organized the Indiana
Comprehensive Genealogy Database. The idea was
to provide a single entry point for all
counties in Indiana, where collected databases
would be stored…
- www.rootsweb.com/~inclark/;
United Youth Conference Virtual Portal:
Welcome to the Virtual Portal for participating
in the first United Youth Conference, which is
bringing key youth leaders from 30 countries to
design a plan of action to empower and give a
voice to young people (July 20-26)… This is
your opportunity to participate in this event,
even though you are unable to be there in
person. What we are working on relies fully on
the contributions of young people like you from
every corner of the world.
- http://www.oneday.org/uyc/virtual.htm;
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Headline: SiteMinder 4.0 from Netegrity now
available
Body: Enhancements over the previous version
include virtual portal technology to manage e-
commerce affiliate partners, portal users’
entire lifecycle management and new password
administration services. The solution also
includes delegated portal administration and
self-registration.
- Internet Business News (April 14, 2000);
The association’s site also houses Small
Business Connections, a virtual portal to the
Web sites of Office Depot, Preview Travel, the
Microsoft Network, and other companies that
provide products, services, and information to
small businesses.
- Card Marketing (April 2000);
IdNET proposes an independent agent’s virtual
portal and a network of individual independent
agency Web sites that would offer a 24-hour-a-
day, 7-day-a-week customer service, and
business and personal financial services. The
portal would also offer insurance and special
national insurance coverage programs. The Web
sites, however, would be more than online
agency…
- Rough Notes (April 2000);
The company made a couple of announcements,
including one that it has developed new
technology for securing and managing affiliate
networks. The technology will allow companies
to link affiliates together in what the company
says is a “virtual portal” to provide a unified
set of services to customers.
- TheStreet.com (February 29, 2000);
“…sectors worldwide that will telecommunicate
or hold a Web meeting between sectors, hold a
Netmeeting and videoconference and exchange
documentation in real time,” Marshall said.
The promise of cost savings, the ability to
meet in real time and the access to unlimited
resources worldwide will drive the virtual
portals. …The site allows companies to conduct
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16
e-business with customers as a secure Web
portal to communicate key…
- Washington Technology (February 21, 2000);
Through an Internet storefront, e-commerce
provides your customers with a virtual portal
to your company, enabling them to check
availability of products or services, place
orders, receive order acknowledgment, receive
shipping advice, track order status, receive
billing, make payment and retain transaction
records.
- Business Credit (November 1, 1999);
Vortals, or virtual portals, are becoming more
popular, and have promise as source of
technical, business and professional
information.
- Online Magazine (March 2000);
The company, which has 100 million square feet
of mall space with 13,000 stores around the
country, is in the process of turning a new Web
site into a virtual portal for the physical
mall, according to Bucksbaum.
- Chicago Tribune (December 8, 1999);
Headline: New Web portals putting government
just a click away…
Body: Can Internet users look forward to
having easy access to government services, much
as they might buy a book online? More and
more, the answer seems to be yes. Just like e-
commerce, the virtual portals of e-government
are open 24 hours a day, 365 days a year at all
levels – federal, state and local.
- The Atlanta Journal and Constitution
(November 10, 1999);
…activists a Linux-based application for
organizing, creating customizable listservs and
cheap Web sites, mentoring, applying for
grants, even finding pro bono attorneys to help
build a strong online civil rights community.
But not everyone approves of Goldman’s virtual
portal of online hate – or his defense of
bigots’ free-speech rights. Militant anti-hate
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groups have spoken out against his ‘education-
first’ approach. One, Anti-Racist Action (ARA)
of Montreal, even temporarily delinked
Hatewatch.org in protest.
- The Village Voice (November 2, 1999); and
In addition, we shall be using a portion of the
proceeds to complete the development of our
heavy metal virtual portal, which will be
launched in spring 2000 and which we consider
will provide a significant new revenue stream
for the Group.
- The Regulatory News Service (November 1,
1999);
This evidence belies applicant’s contention that
VIRTUAL PORTAL and VIRTUAL DATA PORTAL are unique or
fanciful composite terms. They are as merely descriptive
when considered in the composite as the individual terms
are when considered separately. That applicant might be
the first to use the composite term in applicant’s
particular field is not dispositive. The feature of
applicant’s software which VIRTUAL PORTAL and VIRTUAL DATA
PORTAL merely describe is the “interface” enabled by the
software, not the specific type or field of data which the
interface allows the user to access.
In summary, based on the evidence of record and for
the reasons discussed above, we find that the marks
applicant seeks to register in these applications, i.e.,
VIRTUAL PORTAL and VIRTUAL DATA PORTAL, are merely
descriptive as applied to the goods identified in each
Ser. Nos. 75/867,516 and 75/867,517
18
application, and that they therefore are unregistrable
under Trademark Act Section 2(e)(1). We have carefully
considered all of applicant’s arguments to the contrary,
including any arguments not specifically discussed in this
opinion, and find them to be unpersuasive of a different
result.
Decision: The refusal to register in each of the
applications involved in this appeal (Serial Nos.
75/867,516 and 75/867,517) is affirmed.