International Business Machines Corporation

Trademark Trial and Appeal Board

Dec 15, 2006

No. 75581859 (T.T.A.B. Dec. 15, 2006)

Mailed:
December 15, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Business Machines Corporation1
________

Serial No. 75581859
_______

Ethan Horwitz of Goodwin Procter LLP for International
Business Machines Corporation.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Quinn, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

International Business Machines Corporation (“IBM”),
by assignment from Technauts, Inc. (“Technauts”), is the
owner of an application to register on the Supplemental
Register the term ESERVER (in typed or standard character
form) for goods ultimately identified as “computer network

1 The Assignment Division of the U.S. Patent and Trademark Office
has recorded an assignment of the application which is the
subject of this proceeding from the original applicant,
Technauts, Inc., to International Business Machines Corporation
at Reel No. 2489, Frame No. 8518.

THIS DISPOSITION IS
CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75581859
2
access products, namely, computer hardware and operating
software therefor that allow connectivity to and the
administration of public and proprietary computer networks
and the processing of information contained thereon” in
International Class 9.2
The application was originally filed on the Principal
Register, at which time the examining attorney refused
registration on the ground that the term ESERVER is merely
descriptive of applicant's goods. 15 U.S.C. § 1052(e)(1).
After the examining attorney issued a final refusal on the
ground that the mark is descriptive of the goods, Technauts
filed a notice of appeal. Subsequently, Technauts assigned
the application to IBM, and IBM as applicant sought
reconsideration and amended the application to seek
registration under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), claiming that ESERVER had acquired
distinctiveness. The examining attorney found applicant's
evidence of acquired distinctiveness to be insufficient
and, in its response filed February 8, 2005, applicant
amended its application to seek registration on the
Supplemental Register. The examining attorney then refused

2 Application Serial No. 75581859, filed November 4, 1998,
claiming first use anywhere and first use in commerce in March
1998.

Ser. No. 75581859
3
registration pursuant to Section 23(c) of the Trademark
Act, 15 U.S.C. § 1091(c), on the ground that the term is
generic for the goods, and therefore incapable of
distinguishing applicant’s goods. After the examining
attorney issued a final Office action under Section 23(c),
applicant then continued the appeal to the Board. Both
applicant and the examining attorney have filed briefs
concerning the Section 23(c) refusal.
The examining attorney argues that the “plain meaning
of the wording used in the identification shows that
servers are the class of goods at issue”; and that the mark
is a combination of the prefix “e” and the generic term
SERVER. Brief at unnumbered p. 5. According to the
examining attorney, SERVER “primarily refer[s] to a key
feature of the class or genus of the goods at issue in this
case, namely, computer hardware and operating software”;
“the ‘e’ prefix has become commonly recognized as a
designation for goods or services that are electronic in
nature or are sold or provided electronically”; and that
“when the ‘e’ prefix is combined with a generic term, the
mark is found to be generic”, citing, inter alia, the
Board’s decision in Continental Airlines Inc. v. United Air
Lines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-TICKET held
generic for computerized reservation and ticketing of
Ser. No. 75581859
4
transportation services.) The examining attorney adds that
“both the prefix E and the term SERVER are generic of the
goods”; and that “if the combination of two or more generic
terms is such that each term retains its generic
significance, then the combined expression is generic and
thus incapable of denoting source,” citing, inter alia, In
re Gould Paper Corp. 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987). Brief at unnumbered p. 5.
Applicant maintains that ESERVER is not generic; that
the burden is on the examining attorney to show that
ESERVER is generic by clear evidence of generic use; that
“any and all of the Examining Attorney’s references to the
mark ESERVER reveal use of this mark by Applicant and
Applicant's predecessor in interest”; and that the
“evidence introduced by the Examining Attorney, which
includes articles and citations referring separately to the
term ‘SERVER’ and to the prefix ‘e-’ (notably with the
hyphen), with a few references identifying the term ‘e-
server,’ does not illustrate how the public perceives
Applicant's mark ESERVER.” Brief at p. 3.
The Court of Appeals for the Federal Circuit, our
primary reviewing court, has held that “[t]he critical
issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
Ser. No. 75581859
5
to be protected to refer to the genus of goods or services
in question.” H. Marvin Ginn Corp. v. Int'l Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). Ginn explains that:
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

Id. The Office bears the burden of establishing
genericness based on clear evidence of generic use. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1835 (Fed. Cir. 1999).
Turning to the first Ginn factor, i.e., the genus of
goods, the examining attorney has demonstrated that the
genus of goods in this case is “servers.” She has
introduced into the record the following definitions of
“server,” with her final Office action on genericness:
computer or computer program which manages access
to a centralized resource or service in a network
(Compact Oxford English Dictionary,
www.askoxford.com); and

computer in a network that is used to provide
services (as access to files or shared
peripherals or the routing of e-mail) to other
computers in the network (Merriam-Webster Online,
www.m-w.com).

Ser. No. 75581859
6
Based on these definitions and applicant's identification
of goods, we are persuaded that the term “server” describes
the genus of the goods. We note too that applicant has not
suggested another genus of goods.
Next, we consider whether the term “eserver” is
understood by the relevant public primarily to refer to
that genus of goods. Ginn, 228 USPQ at 530. “Evidence of
the public's understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer
surveys, listings in dictionaries, trade journals,
newspapers, and other publications.” In re Merrill Lynch,
Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). “The critical issue in
genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected
to refer to the genus of goods or services in question.”
Ginn, 228 USPQ at 530. In this case, the relevant public
consists of those involved in the design, operation and
purchase of computer networks and information technology
specialists.
The evidence of record in this case, which has been
pending for approximately eight years and in which the
examining attorney issued numerous Office actions and
applicant filed numerous responses, is significant in
Ser. No. 75581859
7
quantity. Because the examining attorney has stated on
p. 2 of her final Office action on genericness that she
“incorporates the evidence included in the prior office
actions,” we consider all of the evidence of record
submitted by the examining attorney, even the evidence
submitted in support of her descriptiveness refusals.3 Of
course, we also consider the evidence submitted by
applicant.
The examining attorney maintains that ESERVER is a
combination of the generic prefix “e” and the generic term
SERVER. Brief at unnumbered pp. 5 and 7. She has
established through definitions submitted with her Office
actions that “e-” is a “prefix that stands for ‘electronic’
and refers to information technologies, business, and
almost anything connected to or transmitted over the
Internet [and] [s]ome examples of its use include e-
business, e-commerce, e-book, and e-mail.” The New
Dictionary of Cultural Literacy (3d ed. 2002), located on

3 Some of this evidence has limited probative value. The listing
of search results from the Google database for “server” showing
“about 104,000,000” results, and for “eserver” showing “about
2,030,000” results, is of limited probative value because the
excerpts that appear in the Google listing are extremely
truncated with brief bits of text, and we do not have the web
pages themselves from which to examine the context within which
the search terms are used. Evidence of use of a term or phrase
in headings or content on individual web sites has far greater
probative value. See In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB
2002).
Ser. No. 75581859
8
www.bartleby.com and made of record with the March 3, 2005
Office action. See also definition of “e-” from
www.encarta.msn.com made of record with the September 19,
2005 Office action; “1. electronic ·e-mail[,]
2. electronic data transfer via the Internet ·e-commerce.”
We find that in the context of applicant's identified
goods, which fall within the definition of a “server,” and
in light of the term SERVER in applicant's mark, the “E” in
ESERVER would be perceived as a prefix standing for
“electronic,” and identify a server involved with the
Internet. See Continental Airlines, 53 USPQ2d at 1397
(“‘E-ticket’ is an abbreviated form of ‘electronic
ticketing’”); In re Styleclick.com Inc., 57 USPQ2d 1445,
1448 (TTAB 2000) (“E” is a prefix that is generally
recognized as meaning “electronic” in connection with
computers and the Internet). In so finding, we reject
applicant's suggestion that there is a difference between
“e-server” with a hyphen and “eserver” without a hyphen -
we see no difference in the meaning or connotation of “e-
server” and “eserver,” and consider them both to be an
abbreviated form of “electronic server.” See, e.g., the
single dictionary entry in The American Heritage Dictionary
Ser. No. 75581859
9
of the English Language (4th ed. 2000) for both “email” and
“e-mail,” of which we take judicial notice.4
The examining attorney has located web sites that use
“electronic server” in the context of the Internet:
www.springeronline.com
Pre-press: the right to retain a pre-press
version of the article on a public electronic
server such as the World Wide Web.

www.thieme.com
Thank you for your interest in thieme-
connect.com, the electronic server for Thieme’s
scientific journals.

www.phschool.com
The End of Good Science? by Jessica Gorman
Anyone can post research to an electronic server,
whether or not the work is any good.

www.geocities.com
The following is an article from a past issue of
the American Way – from American Airlines (since
pulled from their electronic server).

From the foregoing, it appears that an “electronic server”
is another term for a server used for placing information
on the Internet.
We next consider whether the evidence of record shows
that “eserver” or “e-server” is a recognized term for the
goods.

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).

Ser. No. 75581859
10
The www.realtystar.com web page, made of record with
the August 16, 2004 Office action, characterizes an “e-
server” as an “Internet Server”: “eAGENTTM server is an
Internet Server (e-server) solution for running the
following software products online.” Further, the web page
from www.industrialnewsroom.com, made of record with the
August 16, 2004 Office action,5 uses both “e-server” and
“server” to refer to one product and specifies that the
product has Internet applications:
Broadax Systems, Inc. today introduced their
latest high performance e-server, the RMS-6260.
This new powerful mid-range server series
combines six hot-swappable RAID5 compatible
drives and dual redundant, hot-swappable power
supplies with the reliable operation of dual
Intel ® Pentium ® III 1.4 GHz Tualatin
processors, 4 GB SDRAM memory, dual ATA-100 IDE
channels, dual fast Ethernet LANs, five 64-bit/33
MHz full-size PCI cards. The system supports a
variety of operating systems and is optimized for
both local and remote monitoring and restart
making the RMS-6260 ideal for the most demanding
server applications including online banking, e-
trading, e-business, LAN and WAN servers and
other extreme applications where downtime is not
acceptable.

Similarly, the web page from www.isp-planet.com uses both
“e-server” and “server” in reference to the Broadax Systems
RMS-6260 “for the most demanding server applications

5 The same article appears in www.news.managingautomation.com,
made of record by the examining attorney with her September 19,
2005 Office action.
Ser. No. 75581859
11
including online banking, e-trading, e-business,” mentioned
in the preceding passage:
Broadax Systems … introduced its high-performance
e-server, the RMS-6260. … The company says that
the RMS-6260 supports a variety of operating
systems and is optimized for both local and
remote monitoring and restart, which makes the
RMS-6260 ideal for the most demanding server
applications that can accept no downtime. …
The e-server uses 3.5-in. RAID Level 5 drives,
which means that data is striped across three or
more drives for greater data retrieval and
writing speed and then by parity bits is [sic]
stored on another separate drive to provide data
security and fault tolerance.

Two different web pages discuss an Advantech product
and include references to “e-server[s]” which have features
suitable for “ISPs,” i.e., Internet service providers:6
www.electronicstalk.com
Advantech has a high-speed processing, fast
storage capacity e-server, the RS-100-RT series.
This thin, and very compact e-server consists of
a 1U compact, rack-mount design that offers
flexible solutions suitable for ISPs,
telecommunications, VOD and data centres. … In
addition, the server can support RAID (0, 1, 5)
and the third LAN without occupying any PCI slots
and the 64 bit/66MHz PCI slot enables support of
a proprietary two-port Gigabit LAN card without
the need for a PCI bridge chip.

www.engineeringtalk.com
The RS-400 SF is a high-speed-processing fast-
storage-capacity 4U rack-mount e-server. …
Advantech has equipped the e-server with it’s
[sic] own in-house designed, high-performance

6 “ISP” is defined in The American Heritage Dictionary of the
English Language (2003) as “Internet service provider.” We take
judicial notice of this definition.
Ser. No. 75581859
12
motherboard which supports high-speed Intel
Pentium 1, up to 2.1 GHZ ….”

An article entitled Achieving Maximal Value From
Digital Technologies in Scholarly Communication by Charles
E. Phelps from www.arl.org, made of record with the
September 19, 2005 Office action, uses “e-server”
interchangeably with “electronic server” in the context of
discussing the posting of manuscripts on the Internet:
The easiest and lowest costing one is for authors
of manuscripts to post their work (in a locked
and electronically certified version) on their
own web site, so that the editorial Board doing
the certification can produce a virtual journal
by simply posting a table of contents with links
to the appropriate web sites. … A more complete
process would link an e-server to the system,
providing systematic oversight of the electronic
source of the material, much as the Los Alamos
server now does for the community of high energy
physics. If e-servers and editorial boards are
matched one-to-one, this simply becomes a system
of e-journals. However, if a common site for the
servers can be established to service a wide
array of editorial boards, then the process of
entering into the editorial fray is simplified.
Thus, parallel development of mechanisms to
support independent editorial boards and to
provide e-server capabilities for distribution
and archiving may be important.

Several paths for providing this electronic
“server” access seem feasible.

We also note the following Nexis excerpt, submitted by
the examining attorney with her first Office action.

Ser. No. 75581859
13
America’s Network
February 15, 1999
… provide trading partners access that is
surprisingly secure, yet accessible via
ubiquitous Web browser technology. There are
commercially available e- servers that employ
both “pull” (HTML) as well as broadcast (e.g.,
PointCast) technologies.

The web pages and Nexis excerpt addressed in the
preceding paragraphs discuss an “e-server” in the context
of the Internet. In the next few paragraphs, we identify
those Nexis excerpts and web pages of record that refer to
an “e-server” as the name of a product, but are silent as
to whether the “e-server” discussed has Internet
applications.
A Nexis article submitted with the first Office action
discusses an “e-server” in Los Alamos:
Information Technology & Libraries
American Library Association 1998
December 1998
… richness and reach it surpasses anything
libraries can achieve. Andres Odlyzko’s analysis
places the cost of the Los Alamos e-server at
$ 75 per article, compared with $ 2,000 to
$ 4,000 for a print journal.

Further, the examining attorney located the following in
the www.esru.strath.ac.uk website:7

7 This web page is from a foreign source. The Board has 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.” In re Remacle, 66 USPQ
Ser. No. 75581859
14
1. Software overview

The software packages are installed and run
within the Smarthomes system infrastructure. The
packages are categorized into four components:
Adam driver for e-box and PC, e-server, EnTrak
service and Web service.

[The function of the Adam driver is as a]
software driver to manage data transmission
between sensors/actuators and the e-server,
installed in the gateway system (i.e. an e-box or
PC).

e-Server
This acts as a data router passing data
between the e-boxes and EnTrak, which is
installed on the server side of the OSGi
platform.

With her January 30, 2004 Office action,8 the examining
attorney submitted several web pages.9 One web page is from
DDS Donovan Data Systems, Ltd. which identifies the “e-
server Hours,” i.e., the hours of operation of the “e-
server.” “E-server” is identified as a separate product
category along with “Storage,” “Power Supply” and

1222, 1224 n.5 (TTAB 2002). In this case involving computer
technology, it is reasonable to consider a relevant article
regarding computer hardware from an Internet web site, in English
in another country.
8 The examining attorney also submitted with the January 30, 2004
Office action a web page with the title “netproject” and the
heading “IDA Open Source Migration Guidelines”. As Exhibit E to
such “Guidelines” is “Server Reference Software.” The examining
attorney has submitted this because of the subheading “E. Server
Reference Software.” Because the “E” is a reference to “Appendix
E” and not the “e” in “eserver,” this web page has no probative
value.
9 The web pages with the January 30, 2004 Office action do not
include the web addresses of the web pages. As applicant has not
objected to the introduction of these pages, we have considered
them.
Ser. No. 75581859
15
“Accessories” in another webpage entitled
“SUPERMICRO[illegible],” reproduced below:

Different servers with different configurations are
displayed under the heading “E-Server System.” They
evidently are not applicant's servers - applicant has not
claimed that the devices depicted in the web page are
applicant's devices, and the model numbers for applicant's
goods as described in the record are not listed on this web
page.
The record also contains web sites and Nexis excerpts
which refer to “e-servers” - from the context, however, we
cannot determine whether the references to “e-servers” are
to a type of server or specifically to applicant's servers.
Ser. No. 75581859
16
For example, with her January 30, 2004 Office action, the
examining attorney submitted a web page apparently from
“Dedicated-Server-web.com” which promotes “E Server” for
web hosting applications:
E Server
Full service dedicated server and server support
for a low cost web server, e server, and great
savings on all dedicated server …
Looking for a E Server?
E Server
E Server and low cost dedicated server services
are essential for every webmaster – You can trust
us with the critical task of managing your
dedicated server. Dedicated Server offers
managed servers, e server, and collocation
services for enterprise level web hosting
applications – We specialize in e server, and
provide superior quality dedicated server
services such as full-service collocation,
dedicated server, and low cost affordable web
hosting for small business – SAVE on all e
server.
Sign Up Now for Dedicated Server Hosting
E Server

At the bottom of the page is the caption “web hosting, E
Server, and hosting by Dedicated Server.”
Similarly, the web pages from Samteck with the
January 30, 2004 Office action bearing an email address of
sales@samtecindia.com address the installation and
configuration of “e-Server,” which allows users to send and
receive “mails using their favourite E-mail clients. e-
Server acts as a Mail Server for all the e-mail clients on
the Users’ desktops such as Microsoft Outlook, Outlook
Ser. No. 75581859
17
express, Netscape Communicator, Eudora etc.” Because the
promotional material submitted by applicant regarding
applicant's ESERVER product indicates that applicant's
product performs similar services, it is possible that the
reference to “e-Server” in Samteck’s web site is a
reference to applicant's goods.
In addition, the record contains references to
“eServers” or “e-Servers” of four third parties. See the
Nexis excerpt10 from Info World, November 22, 1999, stating:
Caldera also publicly showed its OpenLinux e-
Server 2.3. … Caldera officials believe e-
Server is best suited for hosting specific
business logic and applications and system
processes that must be carried over to the
Internet.

See also, (i) the web page from “sierravideosystems,” which
depicts a “Crestron E-server Ethernet TCP/IP Web Control”
and states, “The SVS/Crestron Web solution uses Crestron E-
server technology and proprietary java based software to
create a virtual environment for SVS switchers to be
Internet appliances. The E-server appliance is similar to
the above software but is able to run on any Windows or

10 This excerpt was one of ten excerpts retrieved by the examining
attorney from a search for “e server” on the Nexis database.
Five of such excerpts are from newswires and four discuss
applicant or applicant's predecessor in interest. Newswire
stories do not have the same probative value as stories appearing
in newspapers and magazines. In re Cell Therapeutics Inc., 67
USPQ2d 1795 (TTAB 2003).

Ser. No. 75581859
18
Macintosh machine.”; (ii) the web page submitted with the
January 30, 2004 Office action which does not show a web
address and states “Statit e-Server is a Software
Development Kit (SDK) used to design quality improvement
and statistical analysis solutions”; and (iii) the web page
from www.vei-systems.com stating, “[t]he MARCI E-Server
comes complete and ready to run with the packet data port
on your F77 and includes domain registration and 1 (one)
year email service. … [T]he E-Server can provide a
complete set of email accounts for everyone on Board.”
While “E-Server” may be used in each instance as the name
of a product, it may also be used as part of a trademark by
each of the four separate entities.
The evidence discussed above includes strong evidence
from a variety of sources that “eserver” or “e-server” is a
server with Internet applications. As such, we find that
an “eserver” is a category or sub-genus of a server.
Although some of the examining attorney’s evidence shows
trademark use by applicant and possibly by third parties,
and some of her evidence may actually be discussing
applicant's ESERVER product, on the totality of the
evidence submitted by the examining attorney, we find that
she has established prima facie that members of the
Ser. No. 75581859
19
relevant public primarily use or understand “eserver” to be
a reference to this sub-genus of goods.
We now consider whether applicant has rebutted the
examining attorney’s prima facie case. Once the USPTO sets
forth a prima facie case, the burden shifts to the
applicant to come forward with evidence to rebut the prima
facie case with “competent evidence.” See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); In re R. M.
Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984);
In re Teledyne Indus., Inc., 696 F.2d 986, 217 USPQ 9, 11
(Fed. Cir. 1982).
Applicant has argued in its brief that the examining
attorney “has proffered little evidence to refute
Applicant's claim [of acquired distinctiveness] or to
otherwise demonstrate that the mark ESERVER is generic”;
that “any and all of the Examining Attorney’s references to
the mark ESERVER reveal use of this mark by Applicant and
Applicant's predecessor in interest”; and that “a few
references identifying the term ‘e-server,’ does not
illustrate how the public perceives Applicant's mark
ESERVER.” Brief at p. 5. It also argues that it has
submitted “an abundance of evidence” showing “continued and
exclusive use of the mark ESERVER and the public’s
Ser. No. 75581859
20
association of the same with Applicant and Applicant's
goods.” Id.
Applicant's challenge to the examining attorney’s
evidence is not persuasive. The examining attorney has
provided clear evidence of generic use of the term “e-
server” from several sources. Further, there are numerous
references to “e-servers” in the examining attorney’s
evidence which without question are not referring to
applicant's ESERVER product.
Additionally, the evidence submitted by applicant in
support of its contention that the mark has acquired
distinctiveness does not overcome the examining attorney’s
prima facie case.11 Applicant submitted with its “Amendment
Under Section 2(f)” the December 4, 2002 declaration of
Ravi C. Periasamy, Technauts’ President and Chief Executive
Officer. Samples of communications with investors,
customers and partners, advertising, press releases,
reviews and presentations, as well as a printout of the
Technauts website, are attached to Mr. Periasamy’s
declaration. Also, with its August 2, 2004 response,

11 With the amendment of the application to the Supplemental
Register, the question of acquired distinctiveness is no longer
before us. However, because in determining whether a term is
generic we must look to all the evidence of record, including
evidence of acquired distinctiveness, we have considered the
evidence for this purpose.

Ser. No. 75581859
21
applicant provided additional evidence, including numerous
articles which describe the ESERVER product, samples of
advertising, and three declarations which address the
asserted acquired distinctiveness of applicant's mark and
applicant's use of ESERVER.12
Evidence of acquired distinctiveness cannot suffice to
convert a generic term into a registrable mark. As the
Board observed in Continental Airlines, 53 USPQ2d at 1395:
Even if one has achieved de facto acquired
distinctiveness in a generic term through
promotion and advertising, the generic term is
still not entitled to protection because to allow
protection would “deprive competing manufacturers
of the product of the right to call an article by
its name.” America Online Inc. v. AT & T Corp.,
51 USPQ2d 1865, 1873 (E.D. Va. 1999), citing
Abercrombie & Fitch, 537 F.2d 4, 9, 189 USPQ 759
(2d Cir. 1976); Genesee Brewing Co., Inc. v.
Stroh Brewing Co., 124 F.3d 137, 143 at n.4, 43
USPQ2d 1734 (2d Cir. 1997); Keebler Co. v. Rovira
Biscuit Corp., 624 F.2d 366, 374, 207 USPQ 465
(1st Cir. 1980) (“No amount of purported proof
that a generic term has acquired secondary
meaning associating it with a particular producer
can transform that term into a registrable
trademark”); Reese Publishing v. Hampton
International Communication, 620 F.2d 7, 12 n.2,
205 USPQ 585 (2d Cir. 1980) (Evidence of
secondary meaning “at most could have established
‘de facto secondary meaning,’ which cannot
suffice to convert a generic term into a
trademark”); Surgicenters of America, Inc. v.
Medical Dental Surgeries, Co., 601 F.2d 1011,
1014, 202 USPQ 401 (9th Cir. 1979) (A generic
word “cannot be validly registered as a trademark

12 The examining attorney has also submitted (i) web pages from
applicant's web site; and (ii) web pages and Nexis excerpts which
refer to Technauts and IBM by name in discussing the ESERVER
product. This evidence does not show generic use of “eserver.”
Ser. No. 75581859
22
even if there is proof of secondary meaning”).
America Online Inc. v. AT & T Corp., 51 USPQ2d at
1873.

Evidence of generic use and proper trademark use by
applicant does not necessarily create a mixed record that
would overcome an examining attorney's evidence of
genericness. It would be fairly easy for a well-heeled
applicant to ensure that its web site and promotional
materials, and even articles in the press regarding its
products, properly use the applicant's mark. However, in
this case, the significant evidence of generic use is not
offset by applicant's evidence that shows proper trademark
use by applicant and articles regarding applicant’s
servers.
Also, applicant contends that it has combined two
separate terms and through this combination, its mark has
added additional meaning to the terms, which enables
ESERVER to be capable of identifying applicant's goods.
Brief at p. 6. We are not persuaded by applicant's
argument in light of the clear evidence of record showing
“eserver” as a sub-genus of servers.
Decision: The refusal to register is affirmed.