International Business Machines Corporation

Trademark Trial and Appeal Board

Jan 28, 2008

No. 78740047 (T.T.A.B. Jan. 28, 2008)

Mailed: 1/28/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Business Machines Corporation
________

Serial No. 78740047
_______

Gina M. Lyons of for International Business Machines
Corporation.

Gina M. Fink, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Quinn, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

International Business Machines Corporation filed an
intent-to-use application to register the mark OPEN
INVENTION NETWORK for
Printed matter, namely, newsletters,
brochures, pamphlets, leaflets, and
flyers, all in the fields of
intellectual property, information
technology, new technology innovation
and research, technology transfer,
licensing of intellectual property
assets, acquisition of intellectual
property assets, and incubation of
intellectual property assets (in
International Class 16);
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78740047
2

Business consultation services and
business advisory services, all
pertaining to intellectual property,
information technology, new technology
innovation and research, technology
transfer, licensing of intellectual
property assets, acquisition of
intellectual property assets, and
incubation of intellectual property
assets (in International Class 35);

Educational services, namely,
conducting on-line exhibitions,
conferences, symposiums, presentations,
displays, interactive exhibits,
programs, educational demonstrations,
workshops, and seminars, all in the
fields of intellectual property,
information technology, new technology
innovation and research, technology
transfer, licensing of intellectual
property assets, acquisition of
intellectual property assets, and
incubation of intellectual property
assets (in International Class 41); and

Licensing of patents to licensees for
consideration including the licensees’
agreement to refrain from asserting
their own patents against other
licensees; providing educational
information via an Internet website in
the fields of patent and information
technology (in International Class 42).

The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that the mark sought to be
registered, if used in connection with applicant’s
services, would be merely descriptive thereof.
Ser No. 78740047
3
When the refusal was made final in all four classes of
services, applicant appealed. Applicant and the examining
attorney filed briefs.
Applicant contends that the examining attorney
improperly has dissected the mark in an effort to conclude
that the mark is merely descriptive. Applicant argues that
the record establishes varied uses of the words “open” and
“network,” and that the various definitions of these words
as used in the computer industry tend to indicate that the
mark as a whole is just suggestive. Applicant points to
the complete absence in the record of any descriptive uses
of “open invention network” by applicant or any third party
in the industry; all of the uses in printed publications
submitted by the examining attorney are, applicant
contends, as a source identifier of applicant’s services.
In support of its arguments, applicant introduced two
declarations with accompanying exhibits, and third-party
registrations.
The examining attorney maintains that the proposed
mark is “merely descriptive of the applicant’s Class 42
services and of the subject matter of applicant’s goods and
services in Classes 16, 35 and 41.” According to the
examining attorney, applicant has combined three
descriptive terms that, when combined, create no separate,
Ser No. 78740047
4
nondescriptive meaning. The examining attorney points to
the meaning of “open” as the “non-proprietary” or royalty-
free feature of applicant’s Class 42 services. The term
“invention,” according to the examining attorney, refers to
the goods and services dealing with intellectual property,
and “network” refers to the fact that “applicant’s venture
is a network of companies, institutions and individuals who
have a similar interest in using and/or promoting
invention.” The examining attorney contends that
applicant’s “Class 42 licensing of patents venture is an
open invention network.” And, further, that the mark
“immediately describes the open nature of applicant’s
royalty-free licensing venture, immediately describes the
type of shared intellectual property and new technology
innovation, namely, invention and finally immediately
describes the network of individuals, companies, and
institutions that are welcome to join the venture by
sharing in the similar interest of promoting the use of
Linux, while agreeing to not assert their own patent rights
in return.” The examining further contends that with
respect to Classes 16, 35 and 41, the subject matter of the
goods and services is “an open invention network,” that is,
“an open (royalty-free) venture where a network of
individuals, companies and institutions can come together
Ser No. 78740047
5
with similar interests and concerns to promote invention.”
In support of the refusal, the examining attorney submitted
dictionary definitions, and excerpts of websites and
printed publications retrieved from the Internet.
In order to better understand the nature of
applicant’s services,1 we examine applicant’s website:
Open Invention Network is an
intellectual property company that was
formed to promote Linux by using
patents to create a collaborative
environment. It promotes a positive,
fertile ecosystem for Linux, which in
turn drives innovation and choice in
the global marketplace. This helps
ensure the continuation of innovation
that has benefited software vendors,
customers, emerging markets and
investors.

Open Invention Network is refining the
intellectual property model so that
important patents are openly shared in
a collaborative environment. Patents
owned by Open Invention Network are
available royalty-free to any company,
institution or individual that agrees
not to asserts its patents against the
Linux system. This enables companies
to make significant corporate and
capital expenditure investments in
Linux--helping to fuel economic growth.

Open Invention Network ensures the
openness of the Linux source code, so
that programmers, equipment vendors,
ISVs and institutions can invest in and
use Linux with less worry about
intellectual property issues. Its

1 Applicant has granted a license to Open Invention Network, LLC
to use the applied-for mark.
Ser No. 78740047
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licensees can use the company’s patents
to innovate freely. This makes it
economically attractive for companies
that want to repackage, embed and use
Linux to host specialized services or
create complementary products.

Open Invention Network believes that
one of the keys to innovation in the
Linux community is the ability to share
software code and ideas. Open
Invention Network acquires patents and
makes them available royalty-free to
any company, institution or individual
that agrees not to assert its patents
against the Linux System.2

An article described applicant’s activities as
follows:
Patent pools are more often created for
offensive purposes: major patent
holders in a narrow application domain
privately agree to cross-license
patents to each other, while creating
an unopposable cartel that can fix
royalty fees and demand payment from
any other (non-cartel) companies. The
Open Invention Network is something of
the opposite: a patent pool created to
promote patent non-enforcement, or non-
aggressive patent use, to reduce patent
litigation and create an opportunity
for innovation in a patent-free (or
mostly patent-free) global context.
[emphasis in original]
(www.xml.coverpages.org)

Thus, the essence of applicant’s services is applicant’s

2 According to applicant, Linux is an operating system; the
source code for Linux is available to everyone for free. See
“Linux”: “a trademark for an open-source version of the UNIX
operating system.” The American Heritage Dictionary of the
English Language (4th ed. 2000).
Ser No. 78740047
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acquisition of patents for cross-licensing purposes to
defend the Linux environment; to accomplish this goal,
applicant will provide open access to intellectual property
related to the Linux environment. Applicant states that it
does not seek revenues by asserting its patents. Rather,
it intends only to assert its patents in a defensive way
against those who attack Linux.
The following dictionary definitions are of record:
open: of, pertaining to, or providing
accessibility; to mark an object, such
as a file, accessible; non-proprietary;
an open standard is one which can be
used without payment.
(www.support.microsoft.com;
www.foldoc.org)

invention: the act or process of
inventing; a new device, method, or
process developed from study and
experimentation.
(The American Heritage Dictionary of
the English Language (4th ed. 2000).

network: a complex, interconnected
group or system; an extended group of
people with similar interests or
concerns that interact and remain in
informal contact for mutual assistance
or support.
(The American Heritage Dictionary of
the English Language (4th ed. 2000).

open source: of or relating to source
code that is available to the public.
(The American Heritage Dictionary of
the English Language (4th ed. 2000).

Ser No. 78740047
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The record includes the declaration of Gerald
Rosenthal, chief executive officer of Open Invention
Network, LLC. He states, in relevant part, the following:
[Applicant] employs the mark OPEN
INVENTION NETWORK to license patents in
consideration for licensee’s agreements
to refrain from asserting their own
patents and patent applications against
other licensees. [Applicant] has not
and does not intend to offer licenses
under its patents to those who do not
agree to cross license their own
patents and patent applications.

I have not been aware of any
descriptive usage of the term OPEN
INVENTION NETWORK during my years [37]
working for companies in the software
industry. The only uses of OPEN
INVENTION NETWORK that I have
encountered, whether by [applicant] or
by third parties, have been in
reference to [applicant] and/or the
services provided to date by
[applicant] under the mark.

I am familiar with the term “open
source” as used in the software
industry, and consider it as referring
to a software program in which the
source code is available free of charge
to the general public for its use
and/or modification. I am not aware of
any meaning for the term “open
invention” or any descriptive use of
this combination of words in the
software industry.

Also of record is the declaration of William E.
Malloy, a consultant to applicant who evaluates software
patent portfolios. Mr. Malloy states in relevant part:
Ser No. 78740047
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I am familiar [with] the words “open,”
“invention” and “network” and some of
the uses of such terms in the field of
computer operating systems, other
software, and related fields.

I am unaware of any use of OPEN
INVENTION NETWORK in a descriptive
manner in any field, including but not
limited to the fields of software
development, operating systems,
computer networking, patent licensing
or educational services. The only uses
of OPEN INVENTION NETWORK of which I am
aware have been in reference to
[applicant] and in identifying the
source of services provided by
[applicant].

I do not believe OPEN INVENTION NETWORK
is descriptive of the educational
services, the licensing or cross-
licensing of patents, or the provision
of information via an Internet website
[as set forth in the application].
OPEN INVETION NETWORK does not, to me,
immediately convey the nature or
characteristics of such educational
services, patent licensing or
information conveyance. The nature of
[applicant’s] services indeed had to be
explained to me as the words OPEN
INVENTION NETWORK did not describe
them.

I do not equate the term “open source
network” with OPEN INVENTION NETWORK.
I also do not consider the term “open
source network” as applying to any of
the services described [in the
application]. As used in a technical
sense, I usually think of an “open
source network” as a network of systems
employing components based on open
source software.

Ser No. 78740047
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The examining attorney submitted eight excerpts of
articles appearing in printed publications. In each
instance, “Open Invention Network” is used in a service
mark manner. That is, the uses show capitalization of the
first letter of each term comprising the mark, and the
author refers to “Open Invention Network” as a source
identifier for applicant’s services. Not a single
descriptive use, either by applicant or any third party, is
of record.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods
and/or services. In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). A mark is descriptive if it "forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods [and/or services]."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976) (emphasis added). See:
In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215
(CCPA 1978). Moreover, in order to be descriptive, the
mark must immediately convey information as to the
qualities, features or characteristics of the goods and/or
services with a "degree of particularity." Plus Products
v. Medical Modalities Associates, Inc., 211 USPQ 1199,
Ser No. 78740047
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1204-1205 (TTAB 1981). See: In re Diet Tabs, Inc., 231
USPQ 587, 588 (TTAB 1986); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); In re TMS Corp.
of the Americas, 200 USPQ 57, 59 (TTAB 1978); and In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Given the dictionary definitions of record, the
individual words comprising applicant’s mark have commonly
understood meanings. We do not believe, however, that the
specific combination of the words OPEN INVENTION NETWORK
results in a designation which, when considered in its
entirety, is merely descriptive of applicant’s goods and
services. That is to say, applicant’s mark, as proposed to
be used in connection with applicant’s goods and services,
does not convey an immediate idea about the goods and
services with any degree of particularity. As pointed out
by applicant, this is borne out by the slightly different
interpretations of the meaning of applicant’s mark that
have been offered by the Examining Attorney; the words
comprising applicant’s mark have varied uses in the
computer software field. In sum, the significance of the
mark as a whole, when considered in the context of the
services, is somewhat vague and unclear, and we find that
the mark is suggestive of the goods and services.
Ser No. 78740047
12
The prohibition against registration of merely
descriptive designations is intended to prevent one party
from precluding all others from fair use of descriptive
terminology in connection with goods and/or services that
are described thereby. Nothing in the record suggests that
others in the computer or related fields have used or would
need to use the three-word combination OPEN INVENTION
NETWORK to describe their goods and/or services.
The Board has noted on a number of prior occasions
that there is a thin line of demarcation between a
suggestive and a merely descriptive designation. The
present case is a close one. However, to the extent that
any of the examining attorney’s arguments and evidence
raise doubts about the merely descriptive character of
applicant’s mark, such doubts are to be resolved in
applicant’s favor and the mark should be published, thus
allowing a third party to file an opposition and develop a
more comprehensive record. See e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992); In re Morton-Norwich Products,
Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet Bakers,
Inc., supra.
Decision: The refusal to register is reversed.