Faculdades Catolicas

Trademark Trial and Appeal Board

Jul 21, 2010

No. 77423725 (T.T.A.B. Jul. 21, 2010)

Mailed: July 21, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Faculdades Catolicas
________

Serial No. 77423725
_______

Laurence P. Colton of Smith, Gambrell & Russell, LLP for
Faculdades Catolicas.

Sara N. Benjamin, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Grendel, Taylor and Ritchie, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Faculdades Catolicas has filed an application to
register the mark LUA, in standard character format, on the
Principal Register for goods ultimately identified as
“Computer operating programs; downloadable computer
programs and computer programs recorded on data media for
computer software development and for implementing computer
programming languages” in Class 9.1 At the request of the

1 Serial No. 77423725, filed March 17, 2008, and alleging a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77423725
2
examining attorney, applicant included the following
translation statement: “The foreign wording in the mark
translates into English as moon.”
The trademark examining attorney finally 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 LUA
merely describes a feature of the identified goods.2
Applicant appealed and requested reconsideration of
the final refusal. On September 10, 2009, the examining
attorney denied the request for reconsideration and this
appeal was resumed. Both applicant and the examining
attorney have filed briefs. For the reasons discussed
below, we reverse the refusal to register.
Before addressing the merits of this appeal, we
consider the examining attorney’s objection to certain
statements made by applicant for the first time in its
appeal brief.3 Citing to 37 C.F.R. § 2.142(d) which states,

2 Applicant initially also sought registration of its mark for
services identified as “development, conception, updating and
maintenance for computer software and language computer programs
including software and software projects” in International Class
42. Registration of these services was finally refused pursuant
to both Trademark Act Sections 2(d) and 2(e)(1). However, in its
request for reconsideration, applicant deleted the Class 42
services and the examining attorney withdrew the Section 2(d)
refusal. Also withdrawn was the requirement for a more definite
identification of the Class 9 goods, after applicant proffered an
acceptable identification in its request for reconsideration.

3 The statements are as follows:
Ser No. 77423725
3
in part, that “[t]he record in the application should be
complete prior to the filing of an appeal,” the examining
attorney argues that “[b]ecause these statements have not
been substantiated by actual evidence, and because they
were untimely submitted, the ‘evidence’ should not be
considered.” (Br. p. 3).
We agree with the examining attorney that the record
in any application must be complete prior to trial.
However, applicant is not foreclosed from making additional
arguments in support of its position in its brief.
Accordingly, we will consider these statements, but point
out that they are of little probative value given their
lack of substantiation.
We also note that applicant extensively argued in its
brief as if the examining attorney had refused registration
based on genericness with respect to the identified goods.
Although the examining attorney opined in her office

(1) “… a search of the USPTO TESS database reveals that no
one except Applicant has even attempted to register LUA
for goods related to computer operating programs,
indicating that it is not a common or commonly used
term”;
(2) “[i]n the present case, as no one has even attempted to
register a mark comprising ‘lua’ in connection with
computer operating programs…”; and
(3) “…no one has ever used the term ‘lua’ in the
identification of goods services [sic] of a mark
submitted for registration with the USPTO for use in
connection with computer operating programs.”

Ser No. 77423725
4
actions that the term “lua” appears to be generic for the
identified goods, as made clear in those actions, as well
as the examining attorney’s brief, the refusal that was
issued and made final is that applicant’s applied-for mark
LUA merely describes the identified goods. Accordingly, we
have given no consideration to those arguments pertaining
solely to the issue of genericness.
Turning now to the merits of the appeal, the examining
attorney maintains that the proposed mark LUA “immediately,
and without conjecture or speculation, describes a feature
or purpose of the identified computer programs, namely,
that the computer programs are written in or run on the LUA
programming language, are for the development of software
written in the LUA programming language and are for
implementation of the LUA programming language.”
(Examining Attorney’s Br. p. 4).
In support of her position, the examining attorney
submitted the following evidence.
1. Definitions of Lua

a. Language type:
C – Command or Scripting
Description:
Lua is an interpreted structured language
designed for embedding into other
applications. It is intended for use as an
extension and scripting language, especially
for applications with requirements for
structured data storage. Because it is
Ser No. 77423725
5
intended for use as an application extension
language, Lua does not have the notion of a
‘main’ program or initial entry point;
instead, all code is assumed to be invoked
from the host application. …
***
Origin:
W. Celes, R. Ierusalimschy, L.H. de
Figueiredo, PUC-Rio, 1994.
***
Remarks:
… Lua has gone through several major
expansions in its fairly short career so
far, but new versions have maintained back-
compatibility with older ones. …4

b. 1. A programming language.5

2. Internet Evidence
a. a copy of the web page (www.tiobe.com/index.php/
paperinfor/tpc/Lua.html/) from the website of Tiobe
Software wherein “Lua” identifies a programming
language.
b. results from searches of the Google search engine
for the term “lua” (pertinent web pages provided with
emphasis in original):6
1) The homepage for the website www.lua.org showing
a logo including the text “the programming language
Lua” and a reference to PUC Rio;

2) an article from the IBM website
(www.ibm.com/developerworks...) entitled Embed Lua

4 Dictionary of Programming Languages, retrieved on June 30,
2008 at http://cgibin.erols.com/ziring/cbi-
bin/cep/cep.pl?_alpha=l.
5 Wiktionary, retrieved June 30, 2008 at
http://en.wiktionary.org/wiki/Lua.
6 The information was retrieved on February 14, 2009 (1-5) and
September 10, 2009 (6-9).
Ser No. 77423725
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for scriptable apps by Peter Seebach, freelance
writer, Wind River Systems, discussing “the Lua
programming language”;

3) an article from the Computerworld website
(www.computerworld.com …) entitled the A-Z of
Programming Languages: Lua. The article is based
on a chat with the developer of the language – Prof.
Roberto Ierusalimschy;

4) an article on the FreEPOC website
(www.freepoc.org) entitled Lua 5 by Reuben Thomas
*** A lovely little language and stating, in part,
that more information about Lua is available from
its homepage and that Lua is available under the
“MIT License”;7

5) a web page from the website www.dmoz.org listing
top computer programming languages of which Lua
appears to rank 33rd and including references to a
manual written by Roberto Ierusalimschy, et al, as
well as Lua reference works written by other third
parties;

6) additional web pages from the website
www.lua.org stating that the “official definition of
the Lua language is its reference manual, which
describes the syntax and the semantics of Lua, the
standard libraries, and the C API. The web pages
also reference numerous books, including the
Reference Manual, Programming in Lua (in multiple
languages) and other books and papers written about
Lua by other authors;

7) an article published on the website
http://onlamp.com entitled “Introducing Lua.” It
reads in part: … Roberto Ierusalimschy of the
Pontifical Catholic University of Rio de Janeiro in
Brazil leads the development of Lua. The most
recent version (5.0.2; version 5.1 should be out
soon) is made available under the MIT license. Lua
is written in 99 percent ANSI C;

7 The MIT License is a generally-known method of distributing
free software.
Ser No. 77423725
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8) a book review (published on the website
http://books.slashdot.org) by Andre Carregal of
Programming in Lua 2d Edition – written by Roberto
Ierusalimschy. The review states in part: “The Lua
programming language has been around for more than
10 years, but only recently has it started to appear
on the mainstream radar screens.
***
Lua is free software and can be obtained from its
site (www.lua.org). There you will also find the
reference manual of the language and the full
contents of the first edition of Programming in Lua;
and

9) an article published on the website
www.allexperts.com discussing the Lua programming
language, in pertinent part (emphasis in original):
The Lua (pronounced LOO-ah, or in IPA) programming
language is a lightweight, reflective, imperative
and procedural language, designed as a scripting
language with extensible semantics as a primary
goal….
***
History
Lua was created in 1993 by Roberto Ierusalimschy,
Luiz Henrique de Figueiredo, and Waldemar Celes,
members of the Computer Graphics Technology Group at
PUC-Rio, the Pontifical University of Rio de
Janeiro, in Brazil. Versions of Lua prior to
version 5.0 were released under a license similar to
the BSD license. From version 5.0 onwards, Lua has
been licensed under the MIT License.

Applicant, in urging reversal of the refusal, maintains
that its mark is not descriptive of the identified goods
because (emphasis supplied):
A. The initial hits on the Yahoo!®, Google® and
Altavisa® search engines for “lua” for goods in
the computer programming field are Applicant’s
goods; and
Ser No. 77423725
8
B. No one has attempted to register Applicant’s
Mark in connection with any related products
[i.e., not using the mark descriptively].
Applicant’s Br. p. 7.
Applicant argues that it is “trying to register the
brand name of its own computer operating programs to which
others also are referring. In other words, others are not
using their own ‘LUA’ computer operating programs – they
are using Applicant’s LUA computing operating programs. …
In fact, the mark, when it appears in searches, already
refers to Applicant’s goods.” Applicant’s Br. p. 8
(emphasis in original).
Applicant also argues that the examining attorney’s
evidence is deficient in that it does not show that a
single competitor promotes its goods as a “lua”; that no
one has attempted to register a mark comprising “lua” in
connection with computer operating programs; and that the
examining attorney’s evidence all refers to Applicant’s
computer operating program.
Lastly, applicant argues that any doubts should be
resolved in favor of applicant as to whether a mark is
“generic.”8 Because it “has used the LUA mark consistently

8 We consider this argument because it is also applicable to a
descriptiveness refusal.
Ser No. 77423725
9
and exclusively worldwide, and all references to the mark
LUA in connection with computer operating programs refer to
Applicant’s goods, [applicant maintains] there is
inherently significant doubt as to whether the LUA mark is
generic.” Applicant’s Br. p. 13.
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 the product
in connection with which it is used, or intended to be
used. 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 (CCPA 1978). Whether a
particular term is merely descriptive is determined in
relation to the goods for which registration is sought and
the context in which the term is used, or is intended to be
used, not in the abstract or on the basis of guesswork. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ 1222, 1224 (TTAB 2002).
In other words, the issue is whether someone who knows what
the goods are will understand the mark to convey
information about them. In re Tower Tech, Inc., 64 USPQ
1314, 1316-1317 (TTAB 2002); and In re Patent & Trademark
Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). It is
Ser No. 77423725
10
well settled, however, that where there is doubt on the
issue, the doubt must be resolved in applicant’s behalf and
the mark should be published for opposition. See In re
Rank Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and
the cases cited therein.
In this case, we have doubts concerning the quantity
and character of the evidence submitted by the examining
attorney in support of her position that “LUA” is merely
descriptive of the identified goods. The examining
attorney’s evidence seemingly shows that the term “lua” is
used in a descriptive manner to refer to a computer
programming language. Closer scrutiny of these materials,
however, reveal that the uses predominantly refer to a
single discrete computer programming language developed by
Roberto Ierusalimschy, Luiz Henrique de Figueiredo, and
Waldemar Celes, members of the Computer Graphics Technology
Group at PUC-Rio, the Pontifical University of Rio de
Janeiro, and currently made available to the public via the
MIT License. Of those remaining, it is unclear whether
such examples display the term descriptively or as a source
indicator. Moreover, applicant has responded to the
Ser No. 77423725
11
examining attorney’s evidence and argues that that all uses
of LUA refer to applicant’s computer programming language.9
Since the evidence does not support third-party use of
the term “lua” generically as the name of a computer
programming language, we find unavailing the examining
attorney’s argument that a computer language is neither
“goods in trade” nor a “service” for which a mark may be
registered. That is, the examining attorney’s reliance on
Loglan Inst., Inc. v. Logical Language Group, Inc., 962
F.2d 1038, 1041, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992), is
misplaced. In that case, the record supported a finding
that the term “Loglan” was used generically to designate a
language, and thus, was unregistrable. Here, no such
finding is, nor can be, made.
We also find unavailing the examining attorney’s claim
that because third-parties incorporate the “Lua programming
language” into their software applications, they should be
free to use the name of the language in describing their
software. The record does not support the examining
attorney’s claim that LUA describes a feature of a
programming language. As noted, applicant states that all

9 Notably, the record reflects that applicant is a non-profit
association that supports the Pontificia Universidade Catolica de
Rio De Janeiro.

Ser No. 77423725
12
uses of “Lua programming language” refer to its goods and
applicant is not foreclosed from using the same mark to
identify more than a single good.
We simply are not persuaded, on this record, that
persons in the relevant computer fields understand the term
“Lua” to refer to a type of programming language as opposed
to a particular proprietary programming language. Thus, we
are unable to conclude that applicant’s mark LUA merely
describes an immediate idea about any characteristic or
feature of applicant’s computer operating programs;
downloadable computer programs and computer programs
recorded on data media for computer software development
and for implementing computer programming languages. That
is not to say that, on a different record, such as might be
adduced in an opposition proceeding, we might reach a
different conclusion.

Decision: The refusal to register under Section 2(e)(1) is
reversed.