Micro-Strategy Incorporated

Trademark Trial and Appeal Board

Aug 15, 2001

No. 75647888 (T.T.A.B. Aug. 15, 2001)

8/15/01 Paper No. 9
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re MicroStrategy Incorporated
___________

Serial No. 75/647,888
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Barbara A. Barakat of Hale and Dorr for MicroStrategy
Incorporated.

Stacy B. Wahlberg, Trademark Examining Attorney, Law
Office 113 (Meryl Hershkowitz, Managing Attorney).
____________

Before Simms, Quinn and Walters, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

MicroStrategy Incorporated has filed a trademark
application to register the mark THE E-BUSINESS
INTELLIGENCE PLATFORM for “computer education training
services,” in International Class 41, and “computer
services, namely, providing computer consulting services,
computer support services, namely, troubleshooting of
computer hardware and software problems via telephone and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/647,888
2
e-mail, computer software design for others,” in
International Class 42.1
The Trademark Examining Attorney has finally refused
registration, 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 of its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that applicant’s
mark “refers to the computer hardware or software with
processing capability underlying a computer system used
for conducting business over the Internet.” We take
judicial notice of the following definitions, submitted
late by the Examining Attorney, of “e-business” from
Prentice Hall’s Illustrated Dictionary of Computing (3rd
ed. 1998), and of “intelligence” and “platform” from The
Computer Glossary (7th ed. 1995), by Alan Friedman:
e-business - An enterprise that conducts many of
its business functions through electronic
means. … The term also refers to
businesses that operate on the Internet and
offer goods, services, and information for
sale via the Web. …

1 Serial No. 75/647,888, filed February 22, 1999, based on an allegation
of a bona fide intention to use the mark in commerce.

Serial No. 75/647,888
3
intelligence – Processing capability. Every
computer is intelligent!

platform – The hardware architecture of a
particular model or computer family. The
term also often refers to just the
operating system, which implies the
particular hardware architecture that it
runs on.

The Examining Attorney submitted excerpts of
articles retrieved from the LEXIS/NEXIS database to
“indicate that in the computer industry the wording
BUSINESS INTELLIGENCE PLATFORM is commonly used to refer
to the computer hardware or software underlying a
particular type of computer system.” The following are
examples of these excerpts:
A snap-together business intelligence platform
under construction by Cognos Inc. of Ottawa will
create a Web portal for mixed enterprise data.
[Government Computer News, September 27, 1999.]

New marketing applications will depend on good
data. What’s needed is the next generation of
customer business intelligence platforms.
[Direct, September 30, 1999.]

The latest version of the product [Intelligent
Miner] will offer new ease-of-use features, such
as visualization capabilities, that the IBM
officials feel are essential in helping
companies gain true business benefit from their
business intelligence platform without having to
rely on mathematicians to run their analytics.
[InfoWorld Daily News, September 22, 1999.]

Schroeder says Brio’s forthcoming Brio One
business intelligence platform will address
product integration concerns …. [ENT, September
8, 1999.]
Serial No. 75/647,888
4

According to Symons, about 3,000 customers chose
the AS/400 as their business intelligence
platform last year. [MIDRANGE Systems, April
13, 1998.]

Applicant contends that the Examining Attorney’s
“perception of the identified services is incorrect”;
that applicant “is not providing platforms, intelligence
platforms or business intelligence platforms”; that
“applicant’s are computer services, training, consulting,
support services and software design for others”; and
that applicant’s trademark is, at most, suggestive
because it “does not merely describe those services,
their nature, characteristics or functions.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or
intended to be used. In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986); and In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary, in order
to find a mark merely descriptive, that the mark describe
each feature of the goods or services, only that it
describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Serial No. 75/647,888
5
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods
or services for which registration is sought, the context
in which the mark is used, and the impact that it is
likely to make on the average purchaser of such goods or
services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Having considered the evidence and arguments
presented, we agree with the Examining Attorney’s
conclusion that “the mark THE E-BUSINESS INTELLIGENCE
PLATFORM, in its entirety, is merely descriptive of a
quality of the applicant’s services in that the applicant
provides consulting, technical support, design and
education concerning … computer hardware and software.”
It is reasonable to conclude that such computer hardware
and software is likely to comprise or include a “business
intelligence platform” or an “intelligence platform.”
Further, applicant’s services, as identified, are not
restricted to any particular sector of consumer and,
thus, those consumers engaged in “e-business” are
included within the scope of potential purchasers of
applicant’s services and described by applicant’s mark.
Applicant, in its arguments as to why the mark is
not merely descriptive, separates the fact that it
Serial No. 75/647,888
6
renders a variety of computer-related services from the
subject matter of those services, i.e., computer hardware
and software, and one of the business sectors encompassed
the market for applicant’s services as identified, i.e.,
“e-business.”
Two arguments made by applicant warrant further
discussion. First, applicant argues that its adoption of
this phrase is unique, and that the Examining Attorney
has failed to provide any evidence of third-party
descriptive use of the phrase E-BUSINESS INTELLIGENCE
PLATFORM. We note, however, that the fact that a term
does not appear in a dictionary, or that it may not be in
common usage in a particular industry, is not
determinative. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In
re Orleans Wines Ltd., 196 USPQ 516 (TTAB 1977).
Second, applicant argues that it owns another
application for federal registration of the same mark for
computer programs that was not refused by the Office on
the ground of mere descriptiveness and was passed to
publication. However, it is well settled that each case
must be decided on its own merits based on the evidence
of record. We obviously are not privy to the record in
the referenced application, and in any event, the Board
Serial No. 75/647,888
7
is not bound by decisions of Examining Attorneys in other
ex parte cases. See In re Nett Designs Inc., 236 F.3rd
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) and cases
cited therein.
In the present case, it is our view that, when
applied to applicant’s services, the phrase THE E-
BUSINESS INTELLIGENCE PLATFORM immediately describes,
without conjecture or speculation, both the subject
matter of the identified services and the intended
purchasers or market for applicant’s services. Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order
for prospective customers for applicant’s services to
readily perceive the merely descriptive significance of
the phrase THE E-BUSINESS INTELLIGENCE PLATFORM as it
pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.