Evolving Systems, Inc.

Trademark Trial and Appeal Board

Jun 2, 2000

No. 75217681 (T.T.A.B. Jun. 2, 2000)

Paper No. 12
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/2/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Evolving Systems, Inc.
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Serial No. 75/217,681
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Thomas D. Bratschun of Swanson & Bratschun L.L.C. for
Evolving Systems, Inc.
Glenn G. Clark, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Hanak, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Evolving Systems, Inc. has filed an application to
register the mark NUMBERMANAGER for “computer software for
use in telecommunications, namely to route customer data
from a regional network to carriers within the network and
Ser No. 75/217,681
2
to verify the customer data for facilitating number
portability.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark, if
applied to applicant’s goods, would be merely descriptive
of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs on
the case.
It is the Examining Attorney’s position that
NUMBERMANAGER directly conveys information about the
purpose or function of applicant’s computer software.
According to the Examining Attorney, in today’s market,
telephone carriers must allow customers to keep their
existing telephone numbers when they change their telephone
service providers. This ability is known as “number
portability.” The Examining Attorney maintains that
NUMBERMANAGER is merely descriptive of applicant’s computer
software because it is designed to manage customer data
which includes the customer’s number.

1 Serial No. 75/217,681, filed December 23, 1996, alleging a bona
fide intention to use the mark in commerce.
Ser No. 75/217,681
3
In support of the refusal to register, the Examining
Attorney made of record an excerpt from the Random House
Unabridged Dictionary wherein “number” is defined as, inter
alia, “a code of numerals, letters, or a combination of
these assigned to a particular telephone.”
Applicant, on the other hand, argues that its computer
software performs numerous processing and updating
functions, and does not merely manage telephone numbers as
suggested by the Examining Attorney. According to
applicant, the mark NUMBERMANAGER at most suggests the idea
that applicant’s software routes customer data from a
regional network to carriers within the network and
verifies the customer data for facilitating number
portability.
Further, applicant points out that no competitors are
using NUMBERMANAGER to describe like products, and that
competitors would not need to use this term to describe
their products because many other terms are available.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of a product or
service. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
Ser No. 75/217,681
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1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant
attribute or idea about them. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought. In re Recovery, 196 USPQ 830
(TTAB 1977).
In this case, we find that the Examining Attorney has
not established that, when applied to applicant’s goods,
the term NUMBERMANAGER immediately describes, without
conjecture or speculation, a significant feature of
function of applicant’s computer software. We believe that
some cogitation or mental processing would be required for
prospective customers of applicant’s goods to readily
perceive the merely descriptive significance of
NUMBERMANAGER as it pertains to computer software used to
route customer data from a regional network to carriers
within the network and to verify the customer data for
facilitating number portability. We note, in this regard,
that applicant, at its website, provides a detailed
explanation of the function of its NUMBERMANAGER computer
Ser No. 75/217,681
5
software. It seems to us that, if the term NUMBERMANAGER
immediately conveyed to prospective purchasers the precise
function of applicant’s services, such a detailed
explanation would be unnecessary, particularly here, where
the purchasers are sophisticated.
We should point out that absent from this record is
any evidence of third-party use of the term NUMBERMANAGER
by competitors for like goods. We note that the Examining
Attorney, in his first Office Action, stated that a search
of the NEXIS database of “NUMBER MANAGER” and
“NUMBERMANAGER” disclosed 3,586 stories. However, the
Examining Attorney made of record only one story. That
story referred to applicant’s NUMBERMANAGER computer
software.
Finally, we recognize that we must resolve whatever
doubt we may have regarding the merely descriptive
character of the mark in favor of applicant and the mark
should be published for opposition. See, In re Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases
cited therein.
Decision: The refusal to register under Section
2(e)(1) of the Act is reversed.
E. W. Hanak
Ser No. 75/217,681
6
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board
Hohein, Administrative Trademark Judge, dissenting:
I respectfully dissent since, as sufficiently shown by
the record and as persuasively argued by the Examining
Attorney, the term NUMBERMANAGER is merely descriptive of
the purpose or function of applicant’s “computer software
for use in telecommunications, namely to route customer
data from a regional network to carriers within the network
and to verify the customer data for facilitating number
portability.” Such term immediately describes, without
speculation or conjecture, precisely what applicant’s
software is designed to do, namely: manage the portability
of a telephone number among competing local telephone
service providers and/or other telecommunications carriers.
While, as the majority notes, “applicant points out
that no competitors are using NUMBERMANAGER to describe
like products, and that competitors would not need to use
this term to describe their products because many other
terms are available,”2 the portion of applicant’s Internet

2 In particular, applicant argues in its brief that:
Ser No. 75/217,681
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website which the Examining Attorney has made of record
significantly reveals among other things that, with respect
to “local number portability” (“LNP”), applicant’s
NUMBERMANAGER software is “[t]he only `off-the-shelf´ ...
product solution of it type on the market today ... to
manage LNP services.” Thus, not only does it appear that
there are no readily available competitive products to
applicant’s software in the LNP field,3 but in any event it

The Examining Attorney presents no evidence that
the term MUMBERMANAGER is used with products
competitive to Applicant’s portability facilitating
software. While the Examining Attorney maintains
[that] his search [of the NEXIS database] showed 3586
appearances of “number manager” or “numbermanager,”
the only story provided pertains to Applicant’s
services. The absence of competitor’s [sic] use of
“number manager” in Applicant’s field is additional
evidence that the mark is not “merely descriptive.”
Concurrent Technologies, Inc. v. Concurrent
Technologies Corp., 12 USPQ2d 1054, 1058 (TTAB 1989).
However, unlike the cited case, in which the record showed an
absence of any descriptive use of the term at issue (CONCURRENT
TECHNOLOGIES), either by the parties therein or any third
parties, in the particular trade (printed electronic circuit
boards), here the absence of evidence of descriptive use (in that
the Examining Attorney neglected to put in any of the 3585 other
instances located by his search) is simply not evidence of the
absence of descriptive use.
3 It appears from the sole story furnished by the Examining
Attorney from his NEXIS search that local number portability is a
relatively recent legal requirement. Specifically, the article,
which in relevant part is headlined “Evolving Systems’ Completes
Development of its Local Number Portability Software (LNP)
Solutions,” states that:
LNP provides consumers with the ability to keep
their existing telephone number when switching between
local telephone service providers. LNP, which was
Ser No. 75/217,681
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is well settled that the fact that there may be other words
or phrases, such as those set forth in applicant’s brief,4
which equally describe any competitive telephone number
management products is immaterial and does not justify
registration. See, e.g., Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632
(CCPA 1962); and In re Eden Foods Inc., 24 USPQ2d 1757,
1761 (TTAB 1992).
More importantly, applicant does not take issue with
the fact that, as confirmed by the dictionary definition
made of record by the Examining Attorney, the term
“number,” in the context of applicant’s product, signifies
a telephone number. Applicant nevertheless contends that,
rather than functioning to “merely `manage phone numbers´
as suggested by the Examining Attorney or perhaps route or
assign phone numbers as one encountering the NUMBERMANAGER
mark might imagine,” its NUMBERMANAGER software performs

mandated by the Telecommunications Act of 1996, will
become operational in the cities of Atlanta, Chicago,
Houston, Los Angeles, Minneapolis, New York and
Philadelphia beginning on October 1, 1997. The rest
of the top 100 telephone services markets are to be
LNP-capable by the end of 1998. Wireless service
providers are also mandated to support LNP by June 30,
1999.
4 According to applicant, such possibilities include, “[f]or
example, `number portability facilitator,´ `ported customer data
conveyer,´ `subscriber data organizer,´ `subscriber data
Ser No. 75/217,681
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numerous functions, such as receiving subscription, network
and service provider data, processing and storing that
data, updating network elements, and responding to and
performing audits. The information set forth in the
portion of record from applicant’s Internet website makes
clear, however, that such functions are all part of what
collectively applicant’s software is designed to do in
order to serve its primary function or purpose of enabling
local telecommunications carriers to manage the portability
of customer or subscriber telephone numbers.
Stated otherwise, how applicant’s product works, that
is, the details of the various individual processes and/or
record-keeping steps that it manages as explained at
applicant’s website, need not be indicated by the term
NUMBERMANAGER. It is sufficient, instead, that such term
describes, with the requisite degree of particularity,
exactly what applicant’s LNP software does, which is to
serve as a telephone number portability manager for local
telecommunications carriers. Such capability would
inevitably be shortened to simply the term “number manager”
or, as applicant has done, NUMBERMANAGER. See, e.g., In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219

processor,´ `subscriber updater,´ and `subscriber information
provisioning,´ to name but a few.”
Ser No. 75/217,681
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(CCPA 1978) (Rich, J., concurring) [given the fact that
“the users of language have a universal habit of shortening
full names--from haste or laziness or just economy of
words,” term GASBADGE held merely descriptive of a gas
monitoring badge since “I regard it as inevitable that a
gas monitoring badge will be called a gas badge as the name
of the goods to the same extent as gas monitoring badge is
the [full] name”].
Plainly, to the technologically knowledgeable and
highly sophisticated telephone network managers and system
technicians who would be the principal buyers and/or users
of applicant’s LNP software, there is nothing in the
combination of the terms "NUMBER" and "MANAGER" into the
term "NUMBERMANAGER" which is ambiguous, incongruous or
susceptible to a plausible meaning other than telephone
number manager. This is especially so since, as actually
used in the context of applicant’s website, such term is
displayed as “NummberManager” and it is clear, as evidenced
by the following excerpt therefrom, that the term conveys
forthwith the principal purpose or function of applicant’s
LNP software:
NumberManager
The solution For Number Portability Service
Management
Ser No. 75/217,681
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Today’s Service Management Systems are not
equipped to deal with the provisioning of a new
application like local number portability.
Managing LNP service changes, modifications, and
disconnects demands a proven, highly reliable
Local Service Management System solution that
effectively communicates with the regional-level
Number Portability Administration Center, network
element management systems, and individual
network elements.
This is exactly what NumberManager Provides.
Accordingly, because no degree of cogitation or mental
processing would be required for purchasers or prospective
customers of applicant’s goods to readily perceive the
merely descriptive significance of NUMBERMANAGER as it
pertains to computer software used to route customer data
from a regional network to carriers within the network and
to verify the customer data for facilitating number
portability, I would affirm the refusal to register. 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., 33 USPQ2d 1156,
1158 (TTAB 1994) [phrase YOUR HEALTH INSURANCE MANAGER
merely describes significant feature or function of
software programs for personal record keeping and
Ser No. 75/217,681
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processing of medical records, health insurance and claims
in that such software manages personal health insurance
matters].
G. D. Hohein
Administrative Trademark Judge,
Trademark Trial and Appeal Board