Enterprise Database Corporation

Trademark Trial and Appeal Board

Oct 21, 2013

No. 85045149 (T.T.A.B. Oct. 21, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Enterprise Database Corporation
_____

Serial Nos. 85045141, 85045149 and 85045153
_____

Kevin T. Oliveira of Odin Feldman & Pittleman P.C. for Enterprise Database
Corporation.

Josette M. Beverly, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Quinn, Wolfson and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Enterprise Database Corporation (“applicant”) seeks to register the mark
ENTERPRISE DATA CORPORATION, in standard characters, on the Principal
Register, or, alternatively, on the Supplemental Register, for the following goods
and services:
Computer and data networking hardware in the nature of
devices for transporting and aggregating data, voice or
wireless communications across multiple network
infrastructures and communications protocols; computer
hardware and software and data networking hardware
and software in the nature of devices, for use with
personal computers, for transmitting, receiving, recording
and monitoring voice, data, information, images, signals,
Serial Nos. 85045141, 85045149 and 85045153
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and messages; electronic communications systems
comprised of computer hardware and software for the
transmission of data between two points; computer
software to manage, analyze, retrieve, monitor, maintain,
report on, structure, model, forecast, present and display
data and information from various databases; computer
software that provides web-based access to applications
and services through a web operating system or portal
interface; computer software that provides real-time,
integrated business management intelligence by
combining information from various databases and
presenting it in an easy-to-understand user interface;
computer software for creating searchable databases of
information and data; computer software to automate
data warehousing; computer software for use in database
management; computer software for computer systems
and application development, deployment and
management; and instructional manuals sold as a unit
therewith in International Class 9 (the “Computer
Hardware and Software Products”);

Business consultation services; consulting, compilation of
information, research, and analysis allowing for the
ability to format, process, analyze and summarize
communications network, billing, geographic,
demographic and customer experience information;
compilation of data as information stores and provision of
information therefrom; providing business information
over global, local and internal computer networks on the
subjects of business planning, business reengineering, on-
line commerce and e-commerce; providing business
information via the internet on the subjects of business
planning, business reengineering, on-line commerce and
e-commerce in International Class 35 (the “Business
Consulting Services”); and

Consulting services in the field of design, selection,
implementation and use of systems of computer hardware
and networking equipment and combinations of computer
hardware and networking equipment and software,
software systems and software solutions for others;
consulting services relating to planning, design and
analysis of computer hardware and networking
equipment, systems of computer hardware and
Serial Nos. 85045141, 85045149 and 85045153
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networking equipment and combinations of computer
hardware and networking equipment and software,
software systems and software solutions for information
processes, systems and business reengineering; computer
consulting services, namely, computer systems analysis
and design of computer systems and information
technology systems for others; providing consulting
services in design and development, integration and
interfacing of computer hardware and software systems
and networks and computer network architectures;
consulting services in the field of design, selection,
implementation and use of software and software systems
for others; consulting services relating to planning, design
and analysis of software solutions for information
processes, systems and business reengineering; computer
consulting services, namely, computer systems analysis
and design of computer systems and information
technology systems for others; design for others of
software applications; providing software systems design
and development for others; information technology
consultation services; computer consulting services,
namely, consultation on information technology in
International Class 42 (the “Computer and Network
Consulting Services”).1

The examining attorney refused registration of the mark in all three classes under
Sections 23(c) and 2(e)(1) of the Act on the grounds that: (1) applicant’s mark is a
generic term incapable of distinguishing applicant’s goods and services; and,
alternatively, (2) even if applicant’s mark is merely descriptive rather than generic,
applicant’s evidence of acquired distinctiveness under Section 2(f) of the Act is

1 Application Serial Nos. 85045153, 85045149 and 85045141, respectively, each filed May
21, 2010 under Section 1(a) of the Act, alleging first use dates of February 23, 2001, and
seeking registration on the Principal Register. On May 1, 2012, in each application,
applicant presented evidence that the mark has acquired distinctiveness under Section 2(f)
of the Act, and amended each application, apparently in the alternative, to seek registration
of the mark on the Supplemental Register. In the future, applicant should more clearly
articulate which of its positions are asserted in the alternative. TBMP § 1215 (3d ed. rev.2
2013); TMEP § 12.02(c) (2013).
Serial Nos. 85045141, 85045149 and 85045153
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insufficient. After the refusals became final, applicant appealed, its requests for
reconsideration were denied and the Board granted the examining attorney’s
motion to consolidate the three appeals. Applicant and the examining attorney filed
briefs. We affirm the refusals to register.
Genericness
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services.”
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted). The ultimate test for determining whether a term is
generic is the primary significance of the term to the relevant public. See Section
14(3) of the Act. See also, In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). The examining attorney bears the burden of
making a “strong” showing, with “clear evidence,” that applicant’s mark is generic.
In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). See In re K-T Zoe Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787,
1788 (Fed. Cir. 1994). “[D]oubt on the issue of genericness is resolved in favor of the
applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
We must make a two-step inquiry to determine whether ENTERPRISE
DATA CORPORATION is generic: First, what is the genus (category or class) of
goods and services at issue? Second, is the term sought to be registered understood
Serial Nos. 85045141, 85045149 and 85045153
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by the relevant public primarily to refer to that genus of goods or services? H.
Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986).
In this case, while applicant makes much of its argument that the examining
attorney misidentified the genera of applicant’s goods and services, applicant and
the examining attorney essentially agree that the genera are adequately defined by
applicant’s identifications of goods and services. Compare, Applicant’s Appeal
Briefs at 8-10 (arguing that applicant’s identifications of goods and services are the
appropriate genus) with Examining Attorney’s Appeal Brief at 6-7 (recognizing that
“the genus of the goods and/or services is often defined by an applicant’s
identification of goods and/or services”); see also, Magic Wand Inc., 19 USPQ2d at
1551 (“a proper genericness inquiry focuses on the description of services set forth
in the certificate of registration,” or, in this case, the involved applications). In any
event, to the extent that applicant and the examining attorney disagree, we agree
with applicant and find that in each of the involved applications, the appropriate
genus is coextensive with applicant’s identification of goods or services.
At the same time, however, the examining attorney is correct that a mark
may be found generic where an applicant’s identification “is broadly worded and
encompasses the narrower category of goods and/or services named in the mark.”
In re Greenliant Systems, Ltd., 97 USPQ2d 1078, 1082 (TTAB 2010); In re Wm. B.
Coleman Co., Inc., 93 USPQ2d 2019, 2024-25 (TTAB 2010); In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1790 (TTAB 2002). Moreover, it is
Serial Nos. 85045141, 85045149 and 85045153
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settled that we must focus on the “reality” of applicant’s use of the term
ENTERPRISE DATABASE CORPORATION when determining the genus of goods
or services. See, In re Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1654 (TTAB
2005), aff’d, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (“the analytical focus
on the description of [goods and] services is based on the premise that the
description reflects actual conditions of use of a mark”); DNI Holdings, 77 USPQ2d
at 1437-38; see also, In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422
(Fed. Cir. 2005); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 & n. 3 (TTAB
2001) (based on the evidence of record, the applicant’s recitation of services was
overly broad, and the actual services offered more accurately reflected the genus).
In this case, applicant’s specimens reveal that in reality applicant offers
goods and services related to enterprise (i.e. “business company or organization”)2
databases (i.e. “a large amount of information stored in a computer in an organized
way that allows individual pieces of information to be found quickly”).3 For
example, the original specimen submitted in support of application Serial No.
85045153, for applicant’s Computer Hardware and Software Products, is a printout
from applicant’s website promoting applicant’s EDC-EasyDPS™ product, which
indicates that the product provides “Seamless data interface to the Defense
Personal Property System,” and allows “Automated data exchange with other TSPs
and with origin and destination agents” (emphasis supplied). Similarly, the

2 See, http://www.macmillandictionary.com/dictionary/american/enterprise, included with
Office Action of September 11, 2010.
3 See, http://www.macmillandictionary.com/dictionary/american/database, included with
Office Action of September 11, 2010.
Serial Nos. 85045141, 85045149 and 85045153
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substitute specimen for the same application (submitted with applicant’s Office
Action response of March 9, 2011) identifies applicant’s software products,
including: EDC-AgentLink™, which provides “Simplified data exchange and
communication between transportation agents worldwide …;” EDC-Contact™, which
is a “Customizable contact management solution,” which stores contact information
in an organized way; and EDC-Fleet™ which stores information regarding vehicles
(including services performed thereon) comprising a business’s fleet, in an organized
way (emphasis supplied). And the examining attorney submitted another printout
from applicant’s website, from the “Our Services” section, which, under the heading
“Database Development,” states “Your business data is an important business asset
… Here are some efficiencies that you can achieve by using our database
development services,” including “You can eliminate the need to have your hardware
storage capacity updated constantly to keep up with the increase in (redundant)
data across software applications” and “You can access your data from anywhere
securely” (emphasis supplied). This webpage further states “We specialize in
providing database-driven solutions regardless of how your data is currently
organized, an Excel spreadsheet, Microsoft Access files, and Microsoft SQL or
Oracle databases.” Denial of Request for Reconsideration January 28, 2013
(emphasis supplied). In other words, while the genera of the respective goods and
services are adequately identified in and by applicant’s three applications,
applicant’s website and specimens make clear that applicant’s goods and services in
fact relate, at least in part, to business or “enterprise” databases.
Serial Nos. 85045141, 85045149 and 85045153
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Turning to the second part of the genericness inquiry, applicant’s
identifications of goods and services and specimens of use establish that the
relevant purchasing public consists of businesses and professionals seeking
information technology products and services. Neither applicant nor the examining
attorney argues to the contrary.
Evidence of this relevant public’s understanding of ENTERPRISE DATA
CORPORATION may be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers, and other publications. In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir.
1985). “[E]vidence of competitors’ use of particular words as the name of their goods
or services is, of course, persuasive evidence that those words would be perceived by
purchasers as a generic designation for the goods and services.” Continental
Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
Here, as indicated, the examining attorney relies on dictionary definitions
which reveal that “enterprise” means “a business company or organization” and
that “database” means “a large amount of information stored in a computer in an
organized way that allows individual pieces of information to be found quickly.”
Office Action of September 11, 2010. We also take judicial notice that “corporation”
means “a large business or organization that under the law has the rights and
duties of an individual and follows a specific purpose,”4 and agree with the
examining attorney that CORPORATION merely designates applicant’s legal status

4 http://www.merriam-webster.com/dictionary/corporation
Serial Nos. 85045141, 85045149 and 85045153
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rather than indicating the source of applicant’s goods or services. In re Wm. B.
Coleman, 93 USPQ2d at 2026; In re Patent & Trademark Services, Inc., 49 USPQ2d
1537, 1539-40 (TTAB 1988); TMEP § 1201.03 (2013).
It is clear that when these individual words are combined, each of them
retains its generic significance. In fact, applicant’s identifications of goods and
services each encompass providing database-related goods and services to
businesses, and portions of applicant’s identifications identify these goods and
services quite specifically. For example, some of applicant’s Computer and Network
Consulting Services relate to computer hardware and software and networking
equipment for “information processes,” which encompasses databases. These
Computer and Network Consulting Services include no limitations as to the
intended buyers, and thus the intended buyers include businesses and professionals
seeking information technology products and services. Similarly, applicant’s
Business Consulting Services are specifically directed to businesses and some relate
to the “compilation of information, research and analysis allowing for the ability to
format, process, analyze and summarize” various types of “information,” while other
services relate to the “compilation of data as information stores and provision of
information therefrom (emphasis supplied). And at least some of applicant’s
Computer Hardware and Software Products are for “transporting and aggregating
data,” “transmitting, receiving, recording and monitoring … information,” “creating
searchable databases,” “database management” and automating “data
warehousing,” and these products include “data networking hardware and
Serial Nos. 85045141, 85045149 and 85045153
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software,” as well as software which works with “data and information from various
databases” (emphasis supplied). Furthermore, some of applicant’s Computer
Hardware and Software Products are clearly directed to businesses, for example
applicant’s software which provides “business management intelligence by
combining information from various databases and presenting it in an easy-to-
understand user interface” (emphasis supplied). In short, applicant’s identifications
of goods and services make clear that when combined, the words “enterprise” and
“database” retain their generic significance.
We recognize that to the extent ENTERPRISE DATABASE CORPORATION
is considered a phrase rather than a compound term, the issue is not whether the
constituent terms are generic, but rather whether the compound term
ENTERPRISE DATA CORPORATION as a whole is generic. In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). We have
no doubt that it is, and that the combined term or phrase ENTERPRISE
DATABASE CORPORATION does not create any meaning other than a corporation
which provides database products and services to businesses.
Indeed, the examining attorney has introduced evidence that a number of
third parties use ENTERPRISE DATABASE in much the same manner as
applicant does. For example the examining attorney relies on the following
evidence in the record of application Serial Nos. 85045141 and 85045149 for the
Computer and Network Consulting Services and the Business Consulting Services
(emphasis supplied):
Serial Nos. 85045141, 85045149 and 85045153
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• A post on Breck Carter’s SQL Anywhere blog
(“sqlanywhere.blogspot.com”) asks “Is SQL Anywhere an
enterprise database?” and answers in the affirmative
“[f]or 90% of the world’s enterprises.” It goes on to
explain that for OLTP systems, whether a database is
“enterprise-level” is based on the following measurement:
“The size of the workload that can be successfully handled
by the database, expressed as the number of simultaneous
busy users, where databases handling workloads above
that can be called ‘enterprise’ and those below that are
called something else, like department-level.” The blog
post goes on to examine how many companies have a
given number of employees as a way to quantify what
qualifies as an “enterprise database;” Office Action of
September 11, 2010;

• an article by Kenneth Hess on the “serverwatch.com”
website entitled “Top 10 Enterprise Database Systems
to Consider” distinguishes various enterprise databases
and indicates that Microsoft’s SQL Server 2008 is “the
platform for business intelligence solutions,” that
PostgreSQL “enjoys some high-profile duties at Skype,
Yahoo! And MySpace,” that Teradata “created the first
terabyte database for Wal-Mart,” that Informix “made the
leap to the corporate world” and that Amazon’s SimpleDB
“offers enterprises a simple, flexible and inexpensive
alternative to traditional database systems,” and
references MySQL’s “commercial adopters” (emphasis in
original); id.

• the Adobe Developer Connection section of the
“adobe.com” website, in an article entitled “Creating
Enterprise Database Components,” uses as an example
a bank manager updating a database regarding a
mortgage application; id.

• the IndySoft website (“indysoft.com”), in promoting
Gage InSite® Enterprise, states that the software
package “offers both large scale corporate environments
and smaller operations alike a customizable system” and
“offers support for leading enterprise database
Serial Nos. 85045141, 85045149 and 85045153
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solutions, making it perfect for deployment on large-scale
corporate systems;” id.5

• the “Consulting Services” section of the Cylogy
(“cylogy.com”) website includes an entry for “Enterprise
Database Consulting” which states that the company
“offers a comprehensive set of well-defined enterprise
database services. These services are primarily focused
on Oracle’s relational database technologies, but may also
be applied towards Microsoft’s SQL Server and IBM’s
DB2 databases;” id.

• the “remotedba.com” website states that the
company provides “[e]nd-to-end enterprise database
design and development;” id.

• the “Internet Consulting” section of the
“urbaninsight.com” website provides the following
example of one of the company’s recent consulting
engagements: “Gather requirements, develop an RFP, and
establish a selection process to retain a consultant for an
enterprise database system and data warehouse;” id.;

• a position listing for a Senior Database Architect on the
“encore-c.com” website summarizes the position as
follows: “This position will be the Database Architect in
the Database Services environment for our Chicago
financial client. This consultant must be able to define,
maintain, communicate, implement & execute the
enterprise database architecture …;” Office Action of
April 1, 2011;

• the “Enterprise Application Management Division”
section of the “dmgov.com” website, under “Database
Management Services,” states that “Database
Management Services include enterprise database
architectural design and modeling … business
intelligence … and business continuity and disaster
recovery planning;” id.

5 The first four entries are also included in the record of application Serial No. 85045153
for the Computer Hardware and Software Products.
Serial Nos. 85045141, 85045149 and 85045153
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• the “Services” section of the Impact B2B6
Consultants website (“impactconsultants.net”) states that
“IBC offers a comprehensive set of well-defined
enterprise database services;” id.;

• the “ronsystems.com” website states that the
company “offers high-quality, affordable alternative to the
typical in-house database administrator … We focus on
the enterprise database tier, especially on Oracle, SQL
Server and MySQL. Find out why with a risk-free 2 day
database consulting;” Denial of Motion for
Reconsideration January 13, 2013;

• the “mobilereach.com” website states “Mobile Reach
provides a variety of specialized consulting services to
help your company reach its goals … We provide mobile
consulting services and enterprise mobility strategy
consultation using our vast knowledge and experience
with various solutions, devices and backend enterprise
database systems;” id.

• the “infinitconsulting.com” website states “With our
specialization in creating custom enterprise database
solutions, we have worked with a wide variety of
industries and business models to provide the solution
that works best for each unique company;” id.

• the “fourcornerstone.com” website, under the
heading “Enterprise Database Management Services,”
states that the company “can reduce the risk of downtime
and interruption of your business critical systems;” id.

• the “expert-database-solutions.com” website states
“Enterprise database design represents a coherent set
of corporate policy across a subject area;” id.7 and

• the Stillman Real Consulting LLC website
(“consultingcommandos.us”) states “A major private
pharmaceutical company employed Stillman Real
Consulting to provide enterprise database support

6 We take judicial notice that “B2B” is an abbreviation for “business to business.”
http://www.thefreedictionary.com/B2B.
7 This printout is also part of the record of application Serial No. 85045153.
Serial Nos. 85045141, 85045149 and 85045153
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services for a wide variety of Clinical, AERS and business
critical database systems ….” Id.

The examining attorney relies on the following additional evidence in the record of
application Serial No. 85045153 for the Computer Hardware and Software Products
(emphasis supplied):
• the “infodome.com” website which states “Often
businesses think they need custom enterprise database
development. Big companies like banks, credit card
companies and such will always need to have enterprise
database systems to manage their businesses;” Office
Action of April 1, 2011;

• AGS’s website (“serverstudio.com”) states
“Organizations today more than ever rely on enterprise
database applications for customer relationship
management, manufacturing, supply chain management,
financials, human resources …;” id.

• a Feb. 5, 2008 blog post by Phil Wainewright on the
“zdnet.com” website entitled “QuickBase, your
enterprise database in the cloud;” id.

• a printout from the “novell.com” website which
refers to “enterprise database servers,” and states that
“enterprise database applications and the associated
data are often some of the most important assets that a
corporate IT department is asked to maintain and
secure;” id.; and

• a printout from the “softwareag.com” website which
states “… there has been an explosion of demand for
access to these enterprise databases over the internet,
and also to use them to support electronic business
operations.” Id.

Moreover, a number of news articles in different publications use
ENTERPRISE DATABASE to identify database-related software products and
consulting services for businesses. The examining attorney relies on the following
Serial Nos. 85045141, 85045149 and 85045153
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evidence in the record of application Serial Nos. 85045141 and 85045149 for the
Computer and Network Consulting Services and the Business Consulting Services
(emphasis supplied):

• “ZIM Corporation reports first quarter 2011
financial results,” Plus Financial Reports, March 16,
2011, which states “The increase in revenue was
primarily attributable to increased sales of enterprise
database software and consulting services …;” Office
Action of April 1, 2011;8

• “ZIM Corporation Reports Third Quarter 2011
Financial Results,” Pak Banker, Feb. 18, 2011, which
quotes an individual as stating “I am especially pleased
that we continue to generate income from operations as
we focus on building our enterprise database
business;” id.

• “10 Top Technologies for 2011: It is that Time of
Year Again as the PE Staff Takes a Look at New
Technologies that Could Impact Our Environment,”
Pollution Engineering, Jan. 1, 2011, which quotes a
company’s CEO as stating: “Many consultants, industrials
and governments have moved from paper, to
spreadsheets, to desktop databases and now to Web,
enterprise databases;” id.

• “David Patrick Joins Apperian as New CEO,”
Computer Weekly News, Oct. 14, 2010, which states
“David has an extensive background in the software
industry and most recently, he was CEO of xkoto, a cross
platform enterprise database virtualization software
company which was acquired by Teradata;” id.

• “Hewlett-Packard Unchanged on Firm Volume,”
News Bites US Markets, Sept. 13, 2010, which states
“The acquisition of Stratavia will strengthen the HP
Software and Solutions portfolio, adding deployment,

8 This printout is also part of the record of application Serial No. 85045153.

Serial Nos. 85045141, 85045149 and 85045153
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configuration and management solutions for enterprise
databases, middleware and packaged applications;” id.

• “The Best CTOs of 2010,” InfoWorld Daily News,
June 1, 2010, which states that “COCC’s SLA model
would have required an additional server and more
storage to be purchased at a cost of … in enterprise
database licensing fees,” and “While conventional
wisdom says that Oracle owns the enterprise database
market, a sizable chunk of Wall Street has stuck with
Sybase, thanks mainly to continued technology
development that specifically targets the high-end needs
of financial services;” id.9

• “Upcoming Webcast Focuses on How Companies are
Surviving in a ‘Post Economic Recovery’ World,” Business
Wire, April 6, 2010, which includes the following quote:
“Open source is the clear choice for an organization’s
enterprise database strategy and we believe Ingres
Database meets this requirement as the leading open
source database available today;” id.

• “Get Your Projects in Line,” Information Week,
March 8, 2010, which states “Like with all information
systems, tasks can be accomplished with very simple
tools, starting with paper forms, leading to Excel
spreadsheets, graduating to enterprise databases, and
culminating with purpose-built PPM software;” id.

• “IBM Acquires Guardium,” Computer Technology
Journal, Dec. 17, 2009, which states “IBM (NYSE: IBM)
announced it has acquired Guardium, a market leader in
real-time enterprise database monitoring and
protection … This acquisition extends IBM’s business
analytics strategy, including the range of offerings
available through IBM’s recently-announced Business
Analytics and Optimization Consulting organization …;”
id.

• “Oracle Blinks on Sun Deal,” Blogging Stocks, Dec.
14, 2009, which states “When it comes to enterprise

9 This printout is also part of the record of application Serial No. 85045153.

Serial Nos. 85045141, 85045149 and 85045153
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databases, the name Oracle (ORCL) is usually the first
one that comes to mind;” id.

• “Databases: Hacker Candy,” Information Week, June
22, 2009, which states “Good hackers today are
businesspeople, assessing each target for the simplest and
most profitable attack scenarios. These days, there are
probably no plumper targets than enterprise
databases. Databases house companies’ easiest-to-sell
confidential data …;” id. and

• “Former MySQL CEO Cites Good Fortune for
Oracle,” InfoWorld Daily News, April 21, 2009, which
states “But Mickos acknowledged the risk that Oracle, a
leader in the commercial enterprise database
market, might hold MySQL back from making more of an
enterprise play;” Id.

The examining attorney relies on the following additional evidence in the record of
application Serial No. 85045153 for the Computer Hardware and Software Products
(emphasis supplied):
• “Redwood City, California Software Giant’s
Acquisitions Broaden Its Product Lines,” Investor’s
Business Daily, March 4, 2011, which states “While a
mainstay for enterprise database software – it
controls about half the market – [Oracle] the Redwood
Shores, Calif., company has received more attention
recently for its hardware products …;” Office Action of
April 1, 2011;

• a listing of statistics relating to Sybase’s financial
performance in the May 26, 2009 edition of Investor’s
Business Daily states that it “develops enterprise
database software for information management,
development and data integration;” id.

• “Significant Second Quarter Customer Wins to Drive
Strong Momentum for Oracle in 2006,” Business Recorder
Jan. 2, 2006, which states “Real-time data that delivers
true business intelligence enables Asia Pacific companies
to make faster, smarter decisions. Oracle’s robust
Serial Nos. 85045141, 85045149 and 85045153
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enterprise database software, integrated middleware
solutions and world-wide support infrastructure …;” id.

• “Application Envy – Banks Have a Wider – But Still
Limited – Range of Choices for Linux-based Applications,”
Bank Systems & Technology, Jan. 1, 2005, which states
“Other database vendors have also planted their flags in
the Linux camp. Sybase (Dublin, Calif.) has teamed with
IBM to offer its enterprise database software on IBM
Power Architecture servers using Linux … Yet another
database vendor, Kx Systems, has also made the switch.
Kx’s database software …;” id.

• “Selection and Use of MySQL in a Database
Management Course,” Journal of Information Systems
Education, Winter 2003, which states “Personal database
software includes those products that are designed to
serve a single user or a small group on a PC platform.
Microsoft Access is the leading product in this category.
In contrast to complex and costly enterprise database
software, Access is a more attractive option for many
educational institutions;" id.

• “Server Superior,” Computers Today, Dec. 31, 1998,
which states “Those looking for database solutions to their
business problems need not look far. Take a good look at
the much awaited new enterprise database software
SQL Server 7.0 …;” id. and

• a printout from the “sitioswebcreactivo.com” website
which states that “Small and large companies have a
variety of complications, so the choices obtainable when
considering the enterprise database software program
subject will reduce costs …;” Denial of Motion for
Reconsideration January 13, 2013.

This evidence establishes that in addition to applicant, a number of third
parties use the term or phrase “enterprise database” to refer to at least some of the
types of products included among applicant’s Computer Hardware and Software
Products. For example, the SQL Anywhere blog, “serverwatch.com,” Adobe
Serial Nos. 85045141, 85045149 and 85045153
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Developer Connections, IndySoft, “infodome.com,” AGS, “novell.com” and
“softwareag.com” websites and “zdnet.com,” Plus Financial Reports, Pollution
Engineering, Computer Weekly News, Business Wire, Information Week, Investor’s
Business Daily, Business Recorder, Bank Systems & Technology, Computers Today
and “sitioswebcreactivo.com” articles all establish that an “enterprise database” is
database software used by businesses. And applicant’s Computer Hardware and
Software Products include computer software: (1) “for transmitting, receiving,
recording and monitoring … information;” (2) “for the transmission of data;” (3) “to
manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast,
present and display data and information from various databases;” (4) for
“combining information from various databases;” (5) “for creating searchable
databases;” (6) “to automate data warehousing;” and (7) “for use in database
management.” In other words, ENTERPRISE DATA CORPORATION is generic for
at least some of applicant’s Computer Hardware and Software Products, which
encompass database software used by businesses.10
Similarly, the evidence establishes that in addition to applicant, a number of
third parties use the term or phrase “enterprise database” to refer to at least some
of the types of services included among applicant’s Computer and Network
Consulting Services and the Business Consulting Services. For example, the

10 To the extent that applicant argues that its goods and services do not relate to “large
scale data collections accessed simultaneously by numerous multiple users,” or to
“relational database systems or relational database management systems” (Office Action
responses of March 9 and September 29, 2011), this is irrelevant because its identifications
of goods and services are not limited to particular types of databases. Moreover, the
evidence of record establishes that “enterprise database” is used in connection with
database software intended for small as well as large businesses.
Serial Nos. 85045141, 85045149 and 85045153
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“cylogy.com,” “remotedba.com,” “urbaninsight.com,” “impactconsultants.net,”
“ronsystems.com,” “mobilereach.com,” “infinitconsulting.com,”
“fourcornerstone.com,” “expert-database-solutions.com” and
“consultingcommandos.us” websites and the Plus Financial Reports, News Bites US
Markets and Computer Technology Journal articles establish that a number of
third parties provide “enterprise database” consulting, management, design,
development and support services. Applicant’s Computer and Network Consulting
Services include consulting services relating to hardware, software and networking
equipment “for information processes,” which encompasses database software used
by businesses. Similarly, applicant’s Business Consulting Services include
“compilation of data as information stores and provision of information therefrom,”
as well as “providing business information over global, local and internal computer
networks,” which encompasses services provided through or otherwise related to
database software used by businesses. “[A] term which is the generic name of a
particular category of goods is likewise generic for any services which are directed
to or focused on that class of goods.” In re CyberFinancial, 65 USPQ2d at 1791.
In short, the evidence of record leaves no doubt that businesses and
professionals seeking information technology products and services would perceive
“enterprise database corporation” as generic for at least some of applicant’s goods in
application Serial No. 85045153 and at least some of applicant’s services in
application Serial Nos. 85045141 and 85045149. See e.g., In re Wm. B. Coleman Co.,
Serial Nos. 85045141, 85045149 and 85045153
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93 USPQ2d at 2025; In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003).11
Moreover, as shown by the evidence, others have a competitive need to use the
term. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Therefore, ENTERPRISE DATABASE CORPORATION is generic, incapable of
functioning as a mark and not registrable on either the Principal or Supplemental
Register.
Descriptiveness and Acquired Distinctiveness
For the sake of completeness, and despite applicant’s failure to address the
issue in its Appeal Brief, we address the examining attorney’s finding that
applicant’s mark has not acquired distinctiveness. As an initial matter, our finding
that “enterprise database corporation” is generic subsumes a finding that the term
is merely descriptive. Indeed, “[t]he generic name of a thing is in fact the ultimate
in descriptiveness.” H. Marvin Ginn, 782 F.2d at 987, 228 USPQ at 530. However,
we will assume for the purpose of this analysis that the term is highly descriptive,
but not generic.
Applicant bears the burden of establishing acquired distinctiveness. In re
Steelbuilding.com, 75 USPQ2d at 1424; Yamaha International, 6 USPQ2d at 1006-
07. Furthermore, it is settled that “the applicant’s burden of showing acquired
distinctiveness increases with the level of descriptiveness; a more descriptive term

11 Applicant’s reliance on Steelbuilding is misplaced in this case. While applicant
apparently provides some goods which go beyond mere “enterprise databases” and some
services which go beyond mere consulting in the field of “enterprise databases,” its
identifications also include goods and services for which the evidence establishes that
“enterprise database” is generic.
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requires more evidence of secondary meaning.” In re Steelbuilding, 75 USPQ2d at
1424 (citing In re Bongrain Intern. (Am.) Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990)). Here, for the reasons set forth above, we find that applicant’s
mark is highly descriptive, and therefore applicant’s burden is “concomitantly high.”
Id. In determining whether applicant has met its burden, “the Board may examine
copying, advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies (linking the name to a source),”
though “no single factor is determinative.” Id.
Applicant has not met its high burden. Applicant’s Executive Vice President,
Diana Corona, in a declaration submitted with applicant’s Office Action response of
May 1, 2012, testifies that applicant has been making “substantially exclusive and
continuous” use of ENTERPRISE DATABASE CORPORATION since February
2001. Ms. Corona further claims that applicant has advertised the mark, but does
not explain how, where or how extensively it has done so, much less provide any
advertising expenditures or sales figures. Similarly, Ms. Corona testifies that
applicant has received “substantial exposure in trade press,” without setting forth
the specific nature or extent of such exposure, or providing copies of relevant
articles. While applicant has made “a number of … presentations” using
ENTERPRISE DATABASE CORPORATION as a trademark, there is no detail
provided regarding the presentations or, importantly, how many people were
exposed to them. Ms. Corona’s testimony that applicant operates a “continuously
available web site” is also unsupported by any detail, such as the number of unique
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visitors to the site. Finally, while Ms. Corona testifies to applicant’s “associations
with a broad array of organizations” and specifically lists several of them, there is
no indication of how many people within those organizations have been exposed to
applicant’s mark.
Ms. Corona’s declaration is unconvincing, especially in the absence of any
specific evidence, documentary or otherwise, of applicant’s advertising expenditures,
unsolicited media coverage or other types of evidence which would establish
acquired distinctiveness. Perhaps more importantly, the evidence of widespread
use of “enterprise database” by numerous third parties establishes that applicant’s
mark has not acquired distinctiveness. To the contrary, this evidence establishes
that applicant’s use of “enterprise database” is anything but “substantially
exclusive.” Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-
41 (Fed. Cir. 1984) (“When the record shows that purchasers are confronted with
more than one (let alone numerous) independent users of a term or device, an
application for registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under such
circumstances.”); see also, Racine Industries Inc. v. Bane-Clene Corp., 35 USPQ2d
1832, 1840 (TTAB 1994).
Applicant’s reliance on its continuous use of the mark for 12 years is
misplaced in this case. In fact, ENTERPRISE DATABASE CORPORATION is so
highly descriptive, and so extensively used by third parties, that applicant’s use of
its mark for 12 years is insufficient to establish acquired distinctiveness. Yamaha,
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840 F.2d at 1576, 6 USPQ2d at 1008; In re Ennco Display Systems, Inc., 56 USPQ2d
1279, 1286 (TTAB 2000) (while Board may consider evidence of continuous use for
more than five years, “the language of the statute is permissive, and the weight to
be accorded this kind of evidence depends on the facts and circumstances of the
particular case”).
For all of these reasons, even if ENTERPRISE DATABASE CORPORATION
were not found to be generic, applicant’s evidence of acquired distinctiveness falls
far short of meeting applicant’s burden of proof.

Decision: The refusals to register on the Principal and Supplemental
Registers are affirmed.