Elasticsearch BV

Trademark Trial and Appeal Board

May 10, 2019

86882877 (T.T.A.B. May. 10, 2019)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: March 19, 2019 Mailed: May 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Elasticsearch BV
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Serial Nos. 86882876 and 86882877
(Consolidated)
_____

John L. Slafsky of Wilson, Sonsini, Goodrich & Rosati
for Elasticsearch BV.
Andrea D. Saunders, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____

Before Wellington, Adlin, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Elasticsearch BV (“Applicant”) filed two applications to register the mark:

for the following goods and services:
Downloadable computer software for use in searching, indexing,
organizing, managing, processing, storing, retrieving, analyzing and
reporting information and data; none of the foregoing related to the
Serial Nos. 86882876 and 86882877
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balancing or scaling of resources to meet increased or decreased computing
needs in International Class 9 (Application Serial No. 86882876); and

Providing online non-downloadable software for use in searching, indexing,
organizing, managing, processing, storing, retrieving, analyzing and
reporting information and data; software as a service, namely, hosting
computer software applications of others for searching, indexing,
organizing, managing, processing, storing, retrieving, analyzing and
reporting information and data; technical support related to the above
services, namely, installation, administration, and troubleshooting of
software applications; and consulting services relating to the above
services; none of the foregoing related to the balancing or scaling of
resources to meet increased or decreased computing needs in International
Class 42 (Application Serial No. 86882877).1

The Examining Attorney takes the position that the literal term ELASTIC is
merely descriptive of Applicant’s goods and services and therefore, under Section 6(a)
of the Trademark Act, 15 U.S.C. § 1056(a) (“Section 6(a)”), registration must be
refused absent a disclaimer of the exclusive right to use ELASTIC.
Applicant appealed and requested reconsideration of each refusal. After the
Examining Attorney denied the requests for reconsideration, the appeals were
consolidated by the Board at Applicant’s request,2 and proceedings resumed. Briefs,
including a reply brief from Applicant, were filed. An oral hearing was held on March
19, 2019. We affirm the refusals to register in the absence of a disclaimer in each
application.

1 Both Applications Serial Nos. 86882876 and 86882877 were filed on January 21, 2016 based
on a bona fide intent to use the mark in commerce. The applications were approved for
publication for opposition and, without any opposition filed, the Office issued notices of
allowance. Applicant then filed statements of use alleging first use in commerce on February
17, 2016 on the goods and in connection with the services. Upon review of the statements of
use, the Examining Attorney raised the disclaimer requirement in each application and,
absent a disclaimer of ELASTIC, made the refusals to register the mark final.
2 7 TTABVUE (Applicant’s motion to consolidate (6 TTABVUE) granted).
Serial Nos. 86882876 and 86882877
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I. Applicable Law
Under Section 6(a), the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable,” such as a component
which is merely descriptive under Section 2(e)(1), and failure to comply with the
requirement is a basis for refusing registration of the entire mark. In re Slokevage,
441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
A term is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or
services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). A term “need not immediately convey an idea of each
and every specific feature of the goods [or services] in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of the goods [or services].” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).
The determination of whether a mark is merely descriptive must be made in
relation to the goods or services for which registration is sought. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
(determination of mere descriptiveness must be made not in the abstract, but in
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relation to the goods or services for which registration is sought, the context in which
the mark is used, and the impact that it is likely to make on the average purchaser
of the goods or services).
II. Analysis
With the initial Office Actions requiring a disclaimer of the term ELASTIC, the
Examining Attorney attached internet printouts containing definitions and
explanations of this term as it is used in connection with cloud computing and “elastic
computing,” including:
1. ELASTIC COMPUTING (EC)3
Definition - What does Elastic Computing (EC) mean?
Elastic computing is a concept in cloud computing in which computing
resources can be scaled up and down easily by the cloud service provider.
Elastic computing is the ability of a cloud service provider to provision flexible
computing power when and wherever required. The elasticity of these
resources can be in terms of processing power, storage, bandwidth, etc.
Technopedia explains Elastic Computing (EC)
Cloud computing is about provisioning on-demand computing resources with
the simplicity of a mouse click. The amount of resources which can be sourced
through cloud computing incorporates almost all the facets of computing from
raw processing power to massive storage space.

Besides providing these services on [a] demand basis, the resources are elastic
in nature, i.e. they can be easily scaled depending upon the underlying
resource requirements on run time without even disrupting the operations and
this ability is known as elastic computing. On a small scale this is done
manually, but for larger installations, the scaling is automatic. For example, a
larger provider of online video could setup a system so that the number of
webservers online scaled during peak viewing hours.

3 Printouts from Technopedia website (www.technopedia.com); attached to Office Action
issued on August 3, 2017.
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2. Elasticity (cloud computing) [from Wikipedia]4

In cloud computing, elasticity is defined as "the degree to which a system is
able to adapt to workload changes by provisioning and de-provisioning
resources in an autonomic manner, such that at each point in time the
available resources match the current demand as closely as possible."

Relying on this “elastic computing” evidence, the Examining Attorney held that
the term “elastic” is merely descriptive in connection with Applicant’s goods and
services because it describes a feature – the ability of computer resources to scale up
or down based on needs.
With its request for reconsideration, Applicant amended the identifications of
goods and services by adding to the end of each: “none of the foregoing related to the
balancing or scaling of resources to meet increased or decreased computing needs.”5
Applicant argues that “[i]n light of its amendment … this application is in proper
condition for publication.”6
In denying the request for reconsideration, the Examining Attorney held that the
amendment “fails to obviate the disclaimer requirement [because] [t]he term
ELASTIC refers to more than ‘balancing or scaling of resources’ as related to the
goods [and services].” Specifically, she argued that the term, “as related to software

4 Printouts from Wikipedia website (www.wikipedia.com); attached to Office Action issued on
February 22, 2018.
5 4 TTABVUE.
6 Id.
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and computing, also refers to a type of searching.” In support, she attached printouts
from five different websites containing the following excerpts:7
“We also implemented elastic searching, which allows users to search thousands
of pages quickly and effectively.”8

“Retriever uses big data searching technology and knowledge graphs to
establish connections between people, places and things such as mobiles, emails
and landlines. Retriever uses elastic searching technology to capture not just
exact matches but individuals with similarities, enabling trace agents to make
a more informed decision.”9

“Elastic Search: The search tool in your SAP Anywhere Online Stores has been
improved to allow for “elastic searching”. This means that when customers enter
partial, or similar but not exact search terms, a larger range of results will
display. This helps your customers find your products much more easily and
quickly when [they are] either unsure of the specific name or even make typos
when searching. Better search results lead to better sales!”10

“The introduction of elastic searching and smart forms has helped overcome this
by intelligently calculating which form is relevant in the workflow and which
forms are not applicable – significantly speeding up the process of auditing and
safety incident reporting.”11

“A new search engine, based on elastic searching technology, allows the search
results to be filtered according to domain-based criteria: level of diploma,
domain targeted, course location, discipline, etc. It is also possible to weight the
search results to raise priority of certain courses using a new result prioritizing
plug-in.”12

(Emphasis added).

7 Office Action July 6, 2018.
8 Id., printouts from Texel website (https://www.sterc.com/work/texel.net), TSDR pp. 2-4
9 Id., printouts from website www.callcredit.co.uk/press-office/insight/retriever, TSDR pp. 5-
11.
10 Id., printouts from website SAP Anywhere, TSDR pp. 12-14.
11 Id., printouts from website Industrial Safety News (www.safetynews.co.nz), TSDR p. 15-
18.
12 Id., printouts from website Kosmos Digital for Education, TSDR pp. 19-23.
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The Examining Attorney argues that the term “elastic” is merely descriptive
because “it still describes [Applicant’s software’s] flexible searching function and the
ability to adjust and change data and information.”13 The Examining Attorney asserts
that “users of elastic searching” technology tout this as an advantage and that
“[s]pecifically, the flexibility of the software allows users to expand and contract their
searches to retrieve, process and analyze information.”14
We also take judicial notice, at the Examining Attorney’s request, of the following
dictionary definitions for the word “elastic”:15
“capable of ready change or easy expansion or contraction: not rigid or
constricted an elastic concept; b: receptive to new ideas: adaptable”;16 and

“flexible; accommodating; adaptable; tolerant.”17

We agree with the Examining Attorney and that the aforementioned evidence
demonstrates that “elastic” describes a computerized search technology that helps
better direct the search results by providing broader or refined responses. The term
“elastic searching” has a specific meaning in the context of Applicant’s goods and
services, as they are identified in the applications, because Applicant’s software is for

13 10 TTABVUE 9.
14 Id.
15 The Examining Attorney made the request in her brief (10 TTABVUE 5) and attached
printouts containing the definitions. The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that
exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375,
1377 (TTAB 2006).
16 From the Merriam-Webster online dictionary (www.merriam-webster.com); 10 TTABVUE
13.
17 From Dictionary.com online dictionary (www.dictionary.com); 10 TTABVUE 22.
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“searching, … retrieving, analyzing and reporting information and data.” Relevant
consumers of this type of software will immediately understand the term “elastic” as
describing a method, feature or characteristic of Applicant’s goods and services,
namely, that they feature “elastic searching technology.” “Elastic searching” is an
important feature in that it helps improve the quality of the search results.
Applicant argues that the Examining Attorney, in denying the request for
reconsideration, “rested her arguments, for the first time, on an entirely different
ground: that the term ‘ELASTIC’ immediately describes a kind of computer
searching.”18 Although the Examining Attorney offered a second meaning and reason
for finding “elastic” to be merely descriptive of Applicant’s goods and services, this
was in response to Applicant’s amendment of the identifications which changed the
scope of its goods and services. Moreover, a term may have multiple meanings that
are merely descriptive under Section 2(e)(1). See In re Carlson, 91 USPQ2d 1198,
1201 (TTAB 2009). We thus see no impropriety in the fact that the Examining
Attorney provided a second, merely-descriptive meaning of the term “elastic” at that
stage nor in maintaining the requirement for a disclaimer of the term.
Applicant also takes issue with the amount and type of evidence submitted by the
Examining Attorney. Specifically, Applicant asserts the evidence is “scant, at best”
and “is most mostly foreign and should be discounted.”19 However, the Examining
Attorney is correct in that there “is no minimum amount or mandatory type of

18 8 TTABVUE 10.
19 Id. at 11-12.
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evidence required to illustrate the descriptiveness” of a term.20 In this case and as
discussed above, we find the website excerpts listed above to be sufficient for purposes
of demonstrating that “elastic” conveys flexible or adaptable searching. As to the
origin or nature of the evidence, in this type of case it is probative, especially given
the highly technical nature of Applicant’s software and services. See, e.g., In re Bayer
AG, 82 USPQ2d at 1835; In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10
(TTAB 2017); In re Int’l Bus. Machines Corp., 81 USPQ2d 1677, 1681 n.7 (TTAB 2006)
(“it is reasonable to consider a relevant article” regarding computer technology from
a foreign English-language website). In this case, the relevant purchasers are by
definition a technologically sophisticated group which would be expected to consider
materials about their highly specialized field from many sources, foreign and
domestic. See In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003);
In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“it is reasonable to assume
that professionals in medicine, engineering, computers, telecommunications and
many other fields are likely to utilize all available resources, regardless of country of
origin or medium”).
We have considered Applicant’s other arguments and the evidence it has
submitted, including the declaration of Applicant’s Vice President of Worldwide
Marketing, Mr. Yoshimura. However, we do not agree with Applicant that “elastic” is
only suggestive of the “technological and commercial flexibility of Applicant’s

20 10 TTABVUE 8.
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technology.”21 Rather, the website excerpts show that “elastic” has a particular
meaning and describes a specific feature or ability in the context of computerized
searches and the term is thus merely descriptive of Applicant’s software goods and
services. Furthermore, there is no evidence to support Applicant’s suggestion in its
brief that the third-party references to “elastic searching” are “in all likelihood in
association with Applicant’s technology (Applicant’s software has been downloaded
nearly 500 million times).” In fact, in each of the references, the term “elastic
search(ing)” appears to be used with a plain descriptive meaning and not in
conjunction with Applicant’s (or any other company’s) technology. Moreover,
Applicant’s suggestion that the descriptive use of the phrase “elastic search(ing)” is
associated “with Applicant’s technology” can be viewed as a strong indication, or even
an admission, that “elastic search(ing)” would be an applicable descriptive phrase in
the context of Applicant’s software and software services.
Accordingly, we find the term “elastic” is merely descriptive of Applicant’s goods
and services, and must be disclaimed.
Decision: The refusal to register Applicant’s mark in both applications based on
the requirement, made under Trademark Act § 6(a), for a disclaimer of ELASTIC is
affirmed. However, this decision will be set aside if Applicant submits the required

21 11 TTABVUE 4 (quoting Mr. Yoshimura’s declaration at 4 TTABVUE 11).
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disclaimers to the Board within thirty days of the date of this decision.22 Trademark
Rule 2.142(g), 37 CFR § 2.142(g).

22 The standardized printing format for the required disclaimer text is as follows: “No claim
is made to the exclusive right to use ELASTIC apart from the mark as shown.” TMEP
§ 1213.08(a)(i) (Oct. 2018).