iNuron NV

Trademark Trial and Appeal Board

Mar 27, 2017

No. 79142092 (T.T.A.B. Mar. 27, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re iNuron NV
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Serial No. 79142092
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Clifford D. Hyra of Symbus Law Group, LLC,
for iNuron NV.
Kevin S. Corwin, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Mermelstein, Bergsman and Heasley,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
iNuron NV (“Applicant”) seeks registration on the Principal Register of the mark
Open vStorage (in standard characters) for the goods and services listed below:
Computers and computer peripheral devices; computer
terminals; computer servers; Computer hardware and
software for saving and distributing open-source data;
Data processing apparatus; Interfaces for computers;
Telecommunication equipment, namely, mobile phones,
telecommunications switchboards, telecommunications
cables, telecommunications circuit boards; Telecommuni-
cation equipment in the nature of telecommunications
instruments for use in cellular radio networks, namely,
mobile phones; Telecommunications equipment in the
Serial No. 79142092
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nature of fiber optic telecommunications apparatus,
namely, fiber optic cables; Magnetic data media, namely,
blank magnetic data carriers; Magnetic data media,
namely, prerecorded magnetic data carriers featuring
mobile data collection solutions in the nature of computer
software for collecting and saving electronic data; Optical
data media, namely, blank optical discs; Recording discs,
namely, blank recordable optical discs; Electronic data
carriers, namely, blank optical data carriers; Electronic
data carriers, namely, pre-recorded CDs and DVDs
featuring mobile data collection solutions in the nature of
computer software for collecting and saving electronic data;
disk drives for computers; Processors, namely, computer
central processing units; Computer software platforms for
clustering and redundancy, replication and back-up,
encryption and for acceleration of multimedia content ren-
dering; Integrated circuits; Computer housings, namely,
computer chassis; Housings for hardware and other
electric and electronic equipment, included in this class,
namely, housings for measuring apparatus in the nature of
distance measuring apparatus; Housings for hardware and
other electric and electronic equipment, included in this
class, namely, housings for electrical apparatus in the
nature of electrical connector housings; Electric measuring
devices not for medical purposes, namely, frequency
meters, voltmeters, acoustic meters, conductivity meters;
Electric monitoring apparatus, namely, remote monitoring
instruments in the nature of alarm monitoring systems;
Electric monitoring apparatus, namely, video cameras
adapted for monitoring purposes; Detectors, namely, cable
detectors in the nature of electronic cable detection devices;
Magnetic object detectors, motion detectors, metal de-
tectors, voltage detectors for measuring electrical current;
Temperature indicators; Heat regulating apparatus,
namely, thermostats; Hygrometers; Flow meters, namely,
air flow meters; Power supply units and control units for
computers, namely, electrical power supplies and input
devices for computers; Instruments for conducting, distrib-
uting, transforming, storing, regulating and controlling
electricity, namely, electric contacts, electric plugs, electric
accumulators, electric sockets, electric inverters, electric
terminals, electric wires, electric transformers, voltage
regulators, electric batteries; Inverters, namely, electricity
inverters; Computer cables and electrical wires for
Serial No. 79142092
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computers; Converters, namely, converters for computer
cables, in Class 9;
Telecommunication services, namely, transmission of data
and information over the Internet and over other tele-
communication networks; Providing telecommunication
equipment, namely, rental of telecommunications appara-
tus; Providing access to databases; Providing access to
telecommunications networks, namely, to the Internet and
to other telecommunication networks; rental of access time
to databases, in Class 38; and
Scientific and technological services, namely, scientific
research, scientific consultancy, scientific computer pro-
gramming services, and preparation of scientific reports in
the field of computer hardware and software; Technological
research, namely, scientific research relating to technology
in the field of computer hardware and software; Techno-
logical consultancy, namely, consulting in the field of
telecommunications technology; Technological studies,
namely, scientific study and research in the field of
computer software; Industrial analysis, namely, computer
systems analysis; Industrial research in the field of
computer hardware and software; design and development
of computer hardware and software; installation, mainten-
ance and updating of computer software; Computer hard-
ware and software consultancy, namely, consulting in the
field of design and use of computer hardware and software
systems for others, in Class 42.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark is merely descriptive. According to the Trademark Examining
Attorney, the mark Open vStorage, when used in connection with the goods and
services identified in the application, “immediately conveys to consumers that

1 Application Serial No. 79142092 was filed on October 25, 2013, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f, based upon Applicant’s International Registration No.
1191042.
Serial No. 79142092
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applicant’s goods and services are of types used in and featuring non-proprietary,
open means of treating all storage in a given computer network as a single pool of
storage.”2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A term is “merely
descriptive” within the meaning of Section 2(e)(1) if it “immediately conveys
knowledge of a quality, feature, function, or characteristic of the goods or services
with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also, In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
A term need only describe a single feature or attribute of the goods to be
descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,

2 Trademark Examining Attorney’s Brief at 6 TTABVUE 12. The Trademark Examining
Attorney should articulate his explanation as to why the mark is merely descriptive in the
opening paragraph of his brief rather than waiting until page 12.
Serial No. 79142092
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1812 (Fed. Cir. 2001). Moreover, a mark need not be merely descriptive of all recited
goods or services in an application. A descriptiveness refusal is proper, “if the mark
is descriptive or any of the goods [or services] for which registration is sought.” In re
Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. Descriptiveness must be evaluated “in relation to the particular goods for
which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Chamber of Commerce of the U.S.,
102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831). “The question is
not whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods and
services are will understand the mark to convey information about them.” DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the goods,
Serial No. 79142092
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the combination results in a composite that is itself merely descriptive. In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of
commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re Putman Publ’g. Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry). On the other hand, a
mark comprising a combination of merely descriptive components is registrable if the
combination of terms creates a unitary mark with a non-descriptive meaning, or if
the composite has an incongruous meaning as applied to the goods or services. See In
re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE
for “bakery products”); In re Shutts, 217 USPQ 363 (SNO-RAKE for “a snow removal
hand tool having a handle with a snow-removing head at one end, the head being of
solid uninterrupted construction without prongs”). In this regard, “incongruity is one
of the accepted guideposts in the evolved set of legal principles for discriminating the
suggestive from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re
Tennis in the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark
TENNIS IN THE ROUND with the phrase “theater-in-the-round” creates an
incongruity because applicant’s services do not involve a tennis court in the middle of
Serial No. 79142092
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an auditorium). Thus, we must consider the issue of descriptiveness by looking at the
mark in its entirety.
“It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services.” In re Fat Boys Water Sports LLC,
118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987)). If the Examining Attorney establishes a prima facie
case, the burden shifts to the applicant to rebut that case. Id. “The Board resolves
doubts as to the mere descriptiveness of a mark in favor of the applicant.” Fat Boys,
118 USPQ2d at 1512 (citing In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB
1994)).
With these principles in mind, we start our analysis by defining the components
of Applicant’s mark Open vStorage. Based on the evidence of record, we find that
the components of Applicant’s mark are defined as follows:3
• The word “open” is defined, inter alia, as “(software) Non-proprietary. An open
standard is one which can be used without payment.”4

3 Applicant contends that the terms comprising its mark have multiple meanings. Applicant’s
Brief, p. 6 (4 TTABVUE 7). However, as indicated above, because descriptiveness is evaluated
“in relation to the particular goods for which registration is sought, the context in which it is
being used, and the possible significance that the term would have to the average purchaser
of the goods because of the manner of its use or intended use,” we focus our analysis on
definitions that are related most closely to the goods and services at issue (e.g., computer
hardware and software for saving and distributing open-source data, providing access to
databases, and consulting in the field of design and use of computer hardware and software
systems for others).
4 Free On-Line Dictionary of Computing (foldoc.org) (July 13, 2015 Office Action at TSDR
p. 9). All TSDR citations refer to .pdf format.
Serial No. 79142092
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• The letter “v” is, inter alia, an abbreviation for “virtual.”5
• “Virtual Storage” is defined, inter alia, as “a system for storing computer data
in more than one place so that it can be used by any computer connected to the
system, for example over the internet: Our company offers virtual storage software
solutions for your data storage and backup needs.”6 A technical report entitled
“Understanding and Using vStorage APIs for Array Integration and NetApp Storage”
(November 2010) explained that vStorage is an API that allows servers to offload
virtual machine work “to supported storage systems, eliminating the load from the
server compute[r] and storage network resources.”7
When applied to, inter alia, computer hardware and software for saving and
distributing open-source data, providing access to databases, and consulting in the

5 AllAcronyms website (allacronyms.com) (2015) (July 13, 2015 Office Action at TSDR p. 4);
see also AF Acronym Finder website (acronymfinder.com) (April 11, 2016 Office Action at
TSDR p. 7).
6 Cambridge Dictionaries Online (dictionary.cambridge.org/us) (April 11, 2016 Office Action
at TSDR p. 10); Your Dictionary (yourdictionary.com) based on the Computer Desktop
Encyclopedia (1981-2016) (April 11, 2016 Office Action at TSDR p. 8) (“storing data on the
Internet. See cloud storage.”); PC Magazine encyclopedia (pcmag.com) (April 11, 2016 Office
Action at TSDR p. 9).
7 July 13, 2015 Office Action at TSDR p. 15. The exhibit must be enlarged to 1600% to be
legible.
“API” is the abbreviation for the term “application program interface.” An API or application
program interface is “a set of routines used by an application program to direct performance
of procedures by the computer’s operating system.” Microsoft Computer Dictionary, p. 33
(5th ed. 2002). In other words, an API is “the interface through which one program can
communicate with another. Different database or systems programs may be interchangeable
on your computer if they share the same API.” Dictionary of Computer and Internet Words
(2001). “An API ensures that all applications are consistent with the operating system and
have similar user interfaces.” Concise Dictionary of Science & Computers (2004). The Board
may take judicial notice of dictionary evidence. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 19082), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Serial No. 79142092
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field of design and use of computer hardware and software systems for others, each
component of Applicant’s mark (i.e., Open, “v,” and Storage) retains its merely
descriptive significance, and the mark in its entirety means and directly engenders
the commercial impression of a non-proprietary computer virtual storage system.
This finding of fact is corroborated by the following evidence:
• StorageMojo website (storagemojo.com)8
Open vStorage
by Robin Harris on Thursday, 5 June, 2014
Open vStorage is a new virtual storage system coming out
of stealth mode. Designed to enable virtual machines to run
directly from object storage, it is a layer between the
hypervisor and the object store with the goal of turning
object storage – as well as local, NAS and other storage –
into a high performance, distributed, VM-centric storage
platform.
It’s from a 15 year old company Cloud Founders that has
100+ employees in existing businesses. CF is an incubator
with a string of successful exits behind them.
Here’s what they say:
Open vStorage is an open-source grid storage router
for virtual machines. It is a virtual appliance (called
the Virtual Storage Router) that is installed on a
host or cluster of hosts on which Virtual Machines
are running.
• A book entitled Open vStorage (https://openvstorage.gitbooks.io)9
Open vStorage
What is Open vStorage

8 April 11, 2016 Office Action at TSDR p. 6.
9 April 11, 2016 Office Action at TSDR p. 27.
Serial No. 79142092
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Open vStorage is an open-source, scale-out, reliable, high
performance, software based storage platform which offers
a block & file interface on top of ethernet drives (Seagate
Kinetic), object storage or a pool of traditional SATA drives.
Open vStorage is licensed under the Modified Apache
License.
Open vStorage is a GeoScale Store Platform. We
fundamentally disrupt the way data is stored by
converging virtual machines and container technology
directly with their local filesystem and directing storage
workloads to virtual block devices. The possibilities are
endless.
• Openvstorage.com10
Open vStorage is used as a software-defined framework for
100TB+ storage clusters in a single local area network and
100PB+ globally distributed, multi-location clusters
generating at least 200K IOPS per host over wide area
networks.
The mark Open vStorage when used in connection with, inter alia, computer
hardware and software for saving and distributing open-source data, providing access
to databases, and consulting in the field of design and use of computer hardware and
software systems for others immediately conveys that the subject matter of the goods
and services are a non-proprietary (Open) data virtual storage system (vStorage) and,
therefore, the mark is merely descriptive.
Decision: The refusal to register Applicant’s mark Open vStorage is affirmed.

10 April 11, 2016 Office Action at TSDR p. 30.