IO Data Centers, LLC

Trademark Trial and Appeal Board

Jun 26, 2012

No. 77902194 (T.T.A.B. Jun. 26, 2012)

Mailed: June 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re IO Data Centers, LLC
________

Serial No. 77902194
Filed December 29, 2009
_______

Oral Hearing May 8, 2012
_______

Todd S. Sharin, Gilbribe Tusa Last & Spellane LLC, for
applicant.

Julie Thomas Veppumthara, Law Office 107, J. Leslie Bishop,
Managing Attorney.
_______

Before Cataldo, Taylor, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant IO Data Centers, LLC, seeks registration on
the Principal Register of the mark I/O ANYWHERE (in
standard characters) for use on “high density enclosures
for computer servers and computer equipment.”1 Applicant
appeals from the examining attorney’s final requirement to
disclaim the exclusive right to use “I/O” apart from the
mark as shown.

1 Based on applicant’s declaration of a bona fide intent to use
the mark in commerce under Trademark Act § 1(b); 15 U.S.C.
§ 1051(b).
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77902194

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We affirm.
I. Relevant Facts and Law
There appears to be no significant disagreement
between applicant and the examining attorney over the basic
facts and law applicable to this case, so we start with the
common ground.
A. Definition of “I/O”
“I/O” is a commonly-used term in the field of
computing, used to describe vital functions, hardware, and
software in any computer system. According to the evidence
of record,
[I/O s]tands for “Input/Output” and is pronounced
simply “eye-oh.” Computers are based on the
fundamental idea that every input results in an
output. For example, if you are running a word
processor program and type a sentence on your
keyboard, the text will appear on the screen.
The keyboard is an input device and the screen is
an output device. You might also print the text
using a printer, which is another output device.
The computer’s CPU handles all the I/O
operations, sending the data it receives to the
correct path. The path may be to the video card,
to the hard drive, or to the RAM, just to name a
few.

The ports on the outside of a computer are
commonly referred to as “I/O ports” because they
are what connect input and output devices to the
computer. Software developers use I/O to
describe how a program will function, depending
on what a user enters. For example, if the user
presses the space bar key in a game, say “Super
Jumper Man,” the character on the screen will
jump. Multiply that by several thousand other
scenarios of user input and you have yourself a
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computer game.

TECH TERMS DICTIONARY (2005-2010), www.techterms.com/definition
/io (visited June 1, 2010).
In addition to the devices attached to an individual
computer (such as a mouse, display screen, audio speaker,
or scanner), I/O devices also include the hardware which
connects computers to other computers or networks, such as
modems, which manage both input and output. See COMPUTER,
TELEPHONY & ELECTRONICS INDUSTRY GLOSSARY, www.csgnetwork.com
/glossaryi.html (visited Dec. 15, 2010).
B. Relevant Law
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a); 15 U.S.C. § 1056(a). Merely
descriptive or generic terms are unregistrable under
Trademark Act § 2(e)(1), and therefore are subject to a
disclaimer requirement if the mark is otherwise
registrable. Failure to comply with a disclaimer
requirement is a ground for refusal of registration. See
In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1954
(TTAB 2006).
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
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function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10
(Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). In other words, the issue is whether someone
who knows what the products are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In
re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366
(TTAB 1985). “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, 497 (TTAB 1978); In re Shutts, 217 USPQ 363, 364-
365 (TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ
165, 166 (TTAB 1980).
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II. Discussion
As noted, applicant seeks to register I/O ANYWHERE for
use on “high density enclosures for computer servers and
computer equipment.” It is plain to us that applicant’s
goods comprise enclosures2 for — among other things — I/O
devices. It is clear from the evidence of record that
“computer equipment” includes I/O devices, and “computer
servers” are themselves I/O devices on a network level.3
Applicant argues that its mark is “one step removed”
from the examining attorney’s descriptiveness analysis
because its goods are “enclosures for computer equipment,
and not the computer equipment” itself, and that its mark
is at most suggestive of the identified goods, because it

2 Applicant asserts in its brief that its “enclosures” “will be
offered as standalone structures. . . .” Nonetheless,
applicant’s identification of goods is not limited to such
structures, and we must thus consider it to include all “high
density enclosures for computer servers and computer equipment,”
including, for example, cases and rack systems for servers and
computer equipment which meet applicant’s identification of
goods.
3 We take notice of the definition of a “server” as “[a] computer
that manages centralized data storage or network communications
resources. A server provides and organizes access to these
resources for other computers linked to it.” AMERICAN HERITAGE
SCIENCE DICTIONARY (2002), http://dictionary.reference.com/browse
/server (visited June 22, 2012). “What actually counts as I/O
depends on what level of detail you are considering....” FREE
ONLINE DICTIONARY OF COMPUTING (2010), http://foldoc.org//I%2fO
(visited Dec. 15, 2010) (attached to final Office action). A
server sending and receiving data on a network is an I/O device
no less than the circuits and software in a desktop computer
which control data sent to and from printers, keyboards, and
other common peripherals.
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would “requir[e] imagination, thought, and perception to
reach a conclusion as to the nature of Applicant’s goods. .
. .” App. Br. at 1 (emphasis in original). “Applicant’s
goods are NOT the computer equipment stored therein. They
are neither computers not accessories or peripherals to
computers. Applicant’s goods are simply high-tech storage
vessels, which provide a secure and ideal environment for
computers to function [in] independent of the vessel in
which they are stored.” Reply Br. at 3.
It is well-settled that in considering
descriptiveness, “[t]he 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 or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d at 1316-17; In re Patent & Trademark Servs.
Inc., 49 USPQ2d at 1538-39; In re Am. Greetings Corp., 226
USPQ at 366. Moreover, a descriptive mark need not provide
information on all features or aspects of the relevant
goods or services; “it need only describe a single feature
or attribute” of the goods or services. In re Chamber of
Commerce of the United States of America, 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012).
In this case, we find the term I/O to be descriptive
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of a feature, function, or attribute of applicant’s
identified goods, namely, that the goods include — among
other things — high density enclosures for “I/O” equipment.
Although applicant’s goods do not comprise the I/O
equipment itself, but rather enclosures for it, the term
I/O is descriptive of such enclosures because it informs
the potential purchaser of a use or purpose for the
enclosures, i.e., to house I/O devices.
By analogy, if the term in question were “CAMERA,” we
would likely find it descriptive of goods identified as
“camera cases,” because “camera” is descriptive of the type
of case or the use for which it is intended. But CAMERA
would be no less descriptive if the goods were instead
identified as “cases for photographic equipment,” because
although it is broader, photographic equipment clearly
includes cameras, and cases for photographic equipment
includes cases for cameras. A mark is descriptive if it
identifies any significant feature, function, or
characteristic of any of the identified goods; to be
descriptive, the mark need not relate to all of the goods
or all features, functions, or characteristics of them.
Applicant argues that its potential purchasers
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would at best imagine the goods and services[4]
offered under the Mark relate to computers in one
way or another. The fact that the Mark is not
used in connection with, and Applicant does not
offer for sale or sell, ”input/output devices” is
proof positive the Mark is at minimum suggestive
and likely worthy of an arbitrary and fanciful
classification. In fact, if these consumers were
to reach the conclusion that the subject goods
and services were computers or computer
peripherals, they would be WRONG!

App. Br. at 5 (emphasis in original). This argument simply
applies the wrong test. Whether applicant’s customers
would believe (or guess) from looking at the mark that
applicant’s goods “were computers or computer peripherals”
is clearly not the relevant question. Instead, the
question is whether such customers — knowing what the goods
are — would understand the mark to describe some feature,
function, or characteristic of them. The examining
attorney’s argument is that “I/O” identifies the type of
computer equipment (or one type of computer equipment) for
which applicant’s enclosures are suitable, and we agree
that it does. Whether applicant itself sells I/O devices

4 Applicant refers several times in its brief to the goods and
services it offers or intends to offer under the mark. To be
clear, the current application refers only to the goods noted
above. Applicant’s use or intended use of the mark on or in
connection with any other goods or services is not an issue in
this appeal. (Although applicant claimed ownership of
Registration No. 3414361 for the mark I/O DATA CENTERS (stylized)
for services, applicant makes no argument in its briefs that we
should consider its prior registration as a factor in this
appeal.)
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or whether applicant’s customers would believe that it does
is irrelevant.
Finally, we believe that applicant’s potential
customers would immediately understand the significance of
the term I/O to applicant’s goods, without the exercise of
imagination or multi-step reasoning. As noted, the term
I/O is widely used in the field of computing, and those
purchasing high density enclosures for computer equipment
and computer servers would undoubtedly be well-acquainted
with it. Such purchasers, when encountering the term I/O
in applicant’s mark, would immediately, and without
conjecture, understand the mark to describe a use or
function of applicant’s goods, namely, that they are (or
include) enclosures suitable for I/O devices.
III. Conclusion
We have carefully considered all of the evidence and
argument properly presented,5 including any matters we have

5 We note applicant’s argument in its reply brief that “the
Examining Attorney improperly objects solely to a part of the
mark and without consideration of the mark as a whole.” E.g.,
Reply Br. at 5-6. Although not well-developed, we understand
this argument as urging that applicant’s mark, I/O ANYWHERE, is
unitary, and that a disclaimer of I/O is therefore unnecessary,
even if the term is descriptive. See generally, TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1213.05 (8th ed. 2011). This argument
was not raised during examination or in applicant’s opening
brief, and we give it no consideration. Arguments raised for the
first time in a reply brief may be considered untimely, and
therefore waived, Threshold.TV Inc. v. Metronome Enters. Inc., 96

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not specifically discussed. We conclude that the term I/O
is merely descriptive of a characteristic or use of
applicant’s goods, and that the term must be disclaimed
pursuant to Trademark Act § 6(a).

Decision: The refusal to register in the absence of a
disclaimer of I/O is AFFIRMED.
However, this decision will be set aside if, within
thirty days of the mailing date of this order, applicant
submits to the Board a proper disclaimer of “I/O.” See
Trademark Rule 2.142(g); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE § 1218 (3d ed. rev. 2012). The disclaimer should
be worded as follows: “No claim is made to the exclusive
right to use I/O apart from the mark as shown.” TMEP
§ 1213.08(a)(i).

USPQ2d 1031, 1035 (TTAB 2010), and in any event, we will not
usually consider an argument on appeal which was not made to the
examining attorney, either prior to appeal or on remand, In re
Lar Mor Int’l, Inc., 221 USPQ 180, 183 (TTAB 1983).