Intel Corp.

Trademark Trial and Appeal Board

Aug 26, 2003

No. 75859872 (T.T.A.B. Aug. 26, 2003)

Hearing: Mailed: 26 AUG 2003
19 JUN 2003 Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Intel Corporation
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Serial No. 75/859,872
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Bobby A. Ghajar of Howrey Simon & Arnold White for Intel
Corporation.
Tricia McDermott Thompkins, Trademark Examining Attorney,
Law Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Hanak, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 29, 1999, Intel Corporation (applicant)
applied to register the mark INTEL NETSTRUCTURE (typed) on
the Principal Register for the following goods in
International Class 9.1
Computer hardware; routers; hubs; servers; switches;
integrated circuits; computer firmware, namely
computer operating systems software; fixed function
servers; computer networking hardware; semiconductor
devices; computer hardware and software for creating,
facilitating, and managing remote access to and
1 Serial No. 75/859,872. The application contains an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/859,872
2
communication with local area networks (LANs), virtual
private networks (VPN), wide area networks (WANs) and
global computer networks; router, switch, hub and
server operating software; computer software for use
in providing multiple user access to a global computer
information network for searching, retrieving,
transferring, manipulating and disseminating a wide
range of information; application software, namely,
computer communications software, inter-network access
and application management software, network
management software, protocol translation software,
and teleconferencing software; computer software tools
for the facilitation of third party software
applications; computer network adapters; computer
hardware and software for wireless network
communications; remote access servers, remote access
adapters, remote access software, and remote access
gateways; networking equipment, namely, digital loop
carriers, multiplexers, optical transmitters, fiber
optic terminals; and manuals sold as a unit and
downloadable from a global computer network.
The examining attorney has refused to register
applicant’s mark without a disclaimer of the term
“netstructure” under the provision of Section 6(a) of the
Trademark Act. 15 U.S.C. § 1056(a). The examining attorney
has required a disclaimer of the term because she found
that the term was merely descriptive of applicant’s goods.
See 15 U.S.C. § 1052(e)(1). After the examining attorney
made the requirement for a disclaimer final, applicant
subsequently filed this appeal.
Both applicant and the examining attorney have made
numerous arguments and submitted a substantial amount of
evidence in support of their positions. The examining
attorney’s evidence begins with several dictionary
Ser No. 75/859,872
3
definitions for the relevant terms. The term “network” is
defined as a “system of computers interconnected by
telephone wires or other means in order to share
information. Also called net.”2 An excerpt from the
Acronym Finder website confirmed that “net” is defined as
“network.” The term “structure” is defined as “something
made up of a number of parts that are held together in a
particular way;” “The way in which parts are arranged
together to form a whole;” and the interrelation or
arrangement of parts in a complex entity.”3
The examining attorney also submitted numerous
excerpts from the Internet and automated databases.4 A
sample of these articles is set out below:
2 American Heritage Dictionary of the English Language, Third
Edition (1992).
3 American Heritage Dictionary of the English Language, Third
Edition (1992).
4 With her brief, the examining attorney attaches numerous
printouts from websites that were already in the record.
Applicant has pointed to the fact that many, if not the majority,
of these printouts are from foreign countries (Bulgaria, Germany,
Australia, Japan, Israel, Romania, Korea, and Italy). Applicant
argues that the issue of descriptiveness should be proven by
evidence from the United States and not from international
sources. The Board has recently held that 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. Further, the Internet is a resource that is widely
available to these same professionals and to the general public
in the United States. Particularly in the case before us,
involving sophisticated medical technology, it is reasonable to
consider a relevant article from an Internet web site, in
English, about medical research in another country.” In re
Remacle, 66 USPQ 1222, 1224 n.5 (TTAB 2002). While we will
Ser No. 75/859,872
4
The structure of any network, including the
configuration of network servers and workstations…
New York Law Journal, January 26, 1998.
Miller is the person in charge of the station’s
Intranet, which uses the Internet’s network structure
to deliver information to each computer terminal…
Peoria Journal Star, February 24, 1998.
Telecommunications is moving gradually toward a
layered network structure with client-server relations
between the layers-copper (wire), (radio frequency),
fiber or coaxial cable.
Radio Comm. Report, December 20, 1999.
New client types, changing database layouts, new
database servers, and even changes to the structure of
the network require modification of most Internet
application code.
InfoWorld, May 1, 2000.
The Internet’s reliance on a few key modes makes it
especially vulnerable to organized attacks by hackers
and terrorists, according to a new study on the
structure of the worldwide network.
Chattanooga Free Press, July 28, 2000.
Networking/Network Structure
Networks are usually classified using three
properties: Topology, Protocol, and Architecture.
PCMECHANIC, January 11, 2002.
It doesn’t help that finding files requires you to
know about the structure of the network; where the
servers are[;] what the directory structures are and
the like.
Network World, September 9, 1996.
Network Structure
Installing Commercial Communications Systems Requires
Ample Forethought
By planning a new building project’s communicative
needs now and for the future, architects, engineers,
and builders can help shape their industry.
consider this evidence, we do not find that the foreign articles
add significantly more support to the examining attorney’s case.
Ser No. 75/859,872
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Constructech (2002).
Other printouts show use of the term “net structure”
in the following ways.
Have you ever wondered what the Internet looks like?…
CAIDA used 17 computers to inject data into the Net
and then track the flow to 661,260 destinations. The
result: 27,549 lines show the paths the data traveled
between 9,667 nodes. Margaret Murray of CAIDA says
this map is one of the most accurate representations
of the Net’s structure.
ON Magazine, January 2002/February 2002.
Such searches are a common feature of Internet
navigation, because the Net’s structure is nonlinear,
and its contents change all the time.
Chronicle of Higher Education, April 28, 2000.
The Army’s frequency managers use the Communications-
Electronics Operating Instructions System to automate
their capabilities to assign frequencies to Combat Net
Radios and to identify net structure that is changed
daily to provide security.
Engineering Management Journal, September 1998.
The examining attorney does not assert “that the mark
describes the individual goods, but that it describes the
purpose of the goods.” Brief at 4. Finally, the examining
attorney concluded that the “record manifestly shows that
applicant’s hardware and software are used to manage and
support the structure of the network.” Brief at 12.
Applicant, on the other hand, maintains that the
examining attorney improperly dissected the term
“netstructure” and that the examining attorney’s evidence
only shows that “a combination of ‘network’ and ‘structure’
Ser No. 75/859,872
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has various meanings.” Brief at 7. For example, applicant
argues that “‘structure,’ when used in conjunction with
‘net,’ means the ‘make up’ or composition of the
‘internet.’” Brief at 8. Applicant also argues that other
articles indicate that hardware and network structure are
two different things and that network structure refers to
the configuration of a computer network.
In addition, applicant submitted evidence that the
Office has not required disclaimers or maintained
descriptiveness objections for marks containing the term
“net.”5 See, e.g., Registration Nos. 2,448,343 (NETMACHINES
for communications servers); 2,453,036 (NETPRINTS for
online posting of articles); 2,176,575 (NETMOUSE for
computer mice); 1,266,983 (NETSWITCH for computer network
switches); 1,328,271 (NETWARE for computers and computer
programs); 1,984,055 (NETLAN for installation, setup,
maintenance, and repair of computer networks); and
2,435,343 (NET SILICON and design for computer hardware and
software for connecting peripherals into a network).
We reverse.
5 We agree with the examining attorney that applicant’s arguments
regarding the treatment of other terms by the Office are not
relevant to this case.
Ser No. 75/859,872
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A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Furthermore, the CCPA has held that term “‘merely’ is
considered to mean ‘only’” In re Quik-Print Copy Shops,
Inc., 616 F.2d 523, 205 USPQ 505, 507 n.7 (CCPA 1980). We
look at the mark in relation to the goods or services, and
not in the abstract, when we consider whether the mark is
descriptive. Abcor, 200 USPQ at 218.
However, in order for a term to be merely descriptive,
it must describe, at least, “a single, significant quality,
feature, function, etc.” of the services. In re Venture
Lending Associates, 226 USPQ 285, 286 (TTAB 1985) (emphasis
added). See also In re Gyulay, 820 F.2d 1216, 1217, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987). When this case law is
applied, the line between suggestive and descriptive terms
is not always bright. The Federal Circuit has emphasized
the immediateness of the information the mark conveys in
drawing the suggestive/descriptive demarcation.
Ser No. 75/859,872
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A mark is merely descriptive if it immediately conveys
qualities or characteristics of the goods. However,
if a mark requires imagination, thought, and
perception to arrive at the qualities or
characteristics of the goods, then the mark is
suggestive.
Nett Designs, 57 USPQ2d at 1566 (citation omitted)
(emphasis added).
Here, when we view the term “netstructure” in light of
this case law and the evidence of record, we find that it
is not clear what information would be immediately conveyed
to prospective purchasers of applicant’s goods. Therefore,
we cannot find that the term “netstructure” would only have
a descriptive meaning when applied to the goods.
First, we must agree with applicant that the term
“net” can mean both the Internet and a generic network for
a computer system. Certainly, the examining attorney is
correct in pointing out that the Internet is a form of
computer network. On the other hand, in the commercial
marketplace, there is a fundamental conceptual difference
between a proprietary computer network and the Internet,
and applicant has argued as follows: “Applicant’s mark has
been evaluated as though it incorporated the designation
NETWORK STRUCTURE or INTERNET STRUCTURE. The very fact
that the Trademark Attorney has construed Applicant’s mark
to mean either of these phrases demonstrates that there are
Ser No. 75/859,872
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various ways to dissect and interpret that element of
Applicant’s mark.” Applicant’s Brief at 3 (emphasis
added). Second, as applicant has observed, the term
“structure” can have different meanings when applied to
computer systems.6 While we agree that the term “net” would
have descriptive significance when applied to computer
network adapters, networking equipment, and similar
products, the term “structure” is more nebulous. Third,
when the terms are combined, it is not clear what the
meaning the term “netstructure” would immediately convey to
a prospective purchaser about the goods in the application.
As the examining attorney’s references show, the terms,
“network structure,” “Internet structure,” and similar
terms have various meanings in the computer field. These
terms are used to refer to the organization of the
Internet; the physical make-up of a telecommunications or
computer network; and the design of these networks.
Furthermore, while some prospective purchasers may
understand the term to mean that applicant’s goods are used
to manage and support the structure of a network, it is not
clear that this would be the only meaning the term would
6 “‘[S]tructure’ may easily refer to: 1) a pattern with a
grouping of items; 2) a building that houses network equipment;
3) an assemblage that is used to itemize network equipment; 4)
the organization of the top-level domain .net; or 5) the
composition or organization of the world wide web.” Brief at 5.
Ser No. 75/859,872
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convey. It is just as likely that the term would convey a
rather nebulous reference to the Internet or a computer
network.
We find the case of In re The Rank Organization
Limited, 222 USPQ 324 (TTAB 1984) to be instructive. The
applicant in that case touted its laser technology as the
reason its high fidelity loudspeakers were superior to its
competitors. However, the Board concluded “that the term
‘LASER’ requires mature thought and imagination in order to
determine what features or characteristics applicant’s
goods possess” and the “fact that the term “LASER” is
capable of being analyzed does not render the term merely
descriptive.” Id. at 326. Similarly here, an analysis of
the term “netstructure” and the goods may lead a
prospective purchaser to understand that the term has some
meaning in relationship to the goods, but we are not
confident that the meaning would be immediately conveyed to
these purchasers.
Because of this uncertainty on our part, our
controlling precedent requires us to resolve any doubts we
may have on the question of descriptiveness in the
applicant’s favor. In re Morton-Norwich Products, Inc.,
209 USPQ 791, 791 (TTAB 1981) (The Board’s practice is “to
Ser No. 75/859,872
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resolve doubts in applicant’s favor and publish the mark
for opposition”). We do so in this case.
Decision: The refusal to register applicant’s mark
INTEL NETSTRUCTURE without a disclaimer of the term
“netstructure” is reversed.