Networks Associates Technology, Inc.

Trademark Trial and Appeal Board

Feb 13, 2001

No. 75218102 (T.T.A.B. Feb. 13, 2001)

2/13/01
Paper No. 18
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Networks Associates Technology, Inc.
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Serial No. 75/218,102
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John L. Slafsky of Wilson Sonsini Goodrich & Rosati for
Networks Associates Technology, Inc.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Cissel, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On December 17, 1996, the above-referenced application
was filed to register the mark “REMOTE DESKTOP” on the
Principal Register for a “computer program which provides
remote viewing, remote control, communications and software
agent distribution within personal computer systems and
across computer network systems,” in Class 9. The
application was based on applicant’s claim of first use of
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/218,102
2
the mark on November 15, 1994, and use in interstate
commerce since January 15, 1995.
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
term applicant seeks to register is merely descriptive of
the goods identified in the application. Noting that
“[r]emote control software allows the user to have control
over another computer that may not be nearby,” and that “a
desktop is an image on the screen of the computer that
resembles a desktop,” she concluded that the term sought to
be registered “merely describes a feature of the goods.”
She stated that “[t]he term is used in the computer
industry to refer to using a computer by remote control.”
Included with the refusal to register were photo-
copies from a glossary of computer terminology wherein the
word “desktop” is defined as “an on-screen representation
of a desktop. The windowing capabilities built into
graphical user interfaces (GUIs) provide a ’virtual
desktop,’ in which the user views an infinite desktop full
of documents. Both the Macintosh and Windows use this
metaphor, but the Mac more closely simulates a real
desktop.” The term “remote control software” is defined as
“software, installed in both machines, that allows a user
at a local computer to have control of a remote computer
Ser No. 75/218,102
3
via modem. Both users run the remote computer and see the
same screen. Remote control operation is used to take
control of the unattended desktop personal computer from a
remote location as well as to provide instruction and
technical support to remote users.”
Also submitted in support of the refusal to register
were excerpts retrieved from the Nexis
database of
periodical publications wherein the term “remote desktop”
appears in the text of a variety of articles. The first
article discusses applicant’s software in connection with
the earnings of applicant’s predecessor. The article
states that the business wrote off several million dollars
“from in-process research and development related to the
acquisition of the remote desktop product line.”
Other examples of the use of the term “remote
desktop[s]” shown in these excerpts are as follows:
… in the upcoming Novell application launcher,
which lets network users launch applications onto
remote desktops.
… Unicenter TNG, which enables clients to monitor
and administer IT resources in a consistent manner
from all types of local and remote desktops, including
Solaris workstations and NCs.
MIS Desktop management on the Net PC is provided
by Intel’s LANDesk Client Manager (LDCM) 3.1, for
remote desktop management and hardware/software asset
inventory.
Ser No. 75/218,102
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The client contains minimal information for
booting the remote desktop, establishing a server
connection and providing a user interface.
Entire security appliances can be configured and
managed from one local or remote desktop.
… a ProShare Conferencing Video System 200 video
card, camera, microphone and coder/decoder software
that connects the remote desktop and instructor via an
ISDN line.
and
Wind communications software or modems were
included, we tested how easy it was to send and
receive the-mail, hook up to remote desktops, and
connect to the Web.
Applicant responded to the refusal to register by
arguing that “REMOTE DESKTOP” is not merely descriptive of
the goods set forth in the application because it does not
describe any particular feature or characteristic of
applicant’s software. Applicant argued that the evidence
submitted by the Examining Attorney does not support the
refusal of registration because it shows “REMOTE DESKTOP”
either in reference to applicant’s own software or in
connection with accessing remote computers, but not as a
descriptive term for software which allows remote access to
computers.
The Examining Attorney was not persuaded by
applicant’s arguments, and in the second Office Action, she
made final the refusal to register under Section 2(e)(1) of
Ser No. 75/218,102
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the Act. Attached to the final refusal to register were
copies of additional computer dictionary definitions and
more excerpts retrieved from the Nexis
database. The word
“remote” is defined as meaning “not in the immediate
vicinity, as a computer or other device located in another
place (room, building, or city) and accessible through some
type of cable or communications link.” The term “desktop”
is defined as meaning “an on-screen work area that uses
icons and menus to simulate the top of a desk. The desktop
is characteristic of the Apple Macintosh and of windowing
programs such as Microsoft Windows.”
Examples of the excerpts from the database of
publications are as follows:
Digital’s ClientWorks remote desktop management
interface software also is present. Among other
things, it tracks inventory and provides enough
information for upgrade…
Integrated Local and Remote Desktop Client
Manageability—Reduces the total cost of PC ownership
through local and remote network systems management…
… which offers the prospect of software tools
that may solve the kind of remote desktop management
problems that Java NCs are designed to attack…
…users no longer need to start an entire remote
desktop in order to run multiple remote applications
within the same session.
…ZENworks will allow policy-based software
distribution and facilitate remote desktop management
and maintenance.
Ser No. 75/218,102
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… gives a complete end-to-end review which cuts
across the entire Intranet, from centralized servers
to local and remote desktops.
and
Hallmark is installing Microsoft Corporation’s
Systems Management Server for remote desktop
management.
Still other examples include use of the term in
connection with “handling remote desktop control”; “gaining
control of a remote desktop”; providing “remote desktop
configuration and management”; “the remote desktop
protocol”; “using remote desktop access to cut support
costs”; “the latest in remote desktop management
functionality”; “remote-desktop connections”; tracking
“remote desktop control”; and setting preferences “from a
remote desktop.”
The applicant responded to the final refusal to
register the mark under Section 2(e)(1) of the Act by
amending the application to seek registration on the
Supplemental Register.
The Examining Attorney responded to this amendment by
refusing registration on the Supplemental Register under
Section 23 of the Lanham Act on the ground that the term is
incapable of identifying applicant’s goods and
distinguishing them from those of others. She held that
“REMOTE DESKTOP” is a generic term, the apt or common
Ser No. 75/218,102
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descriptive name for applicant’s products, and as such, is
prohibited from registration on the Supplemental Register.
Applicant responded with argument that the term it
seeks to register is not generic for the computer software
on which applicant uses the term as a trademark. Applicant
argued that its mark is capable of distinguishing its goods
and that the Examining Attorney had not met her burden of
demonstrating that the mark is generic. Attached as
exhibits to applicant’s response where the results of a
computer search of on-line dictionaries, including forty-
three dictionaries devoted to computer-related terms and
phrases, showing no listing for the term “remote desktop.”
Also submitted as an exhibit to applicant’s response was a
printout from a private database of trademark registration
information. The printout indicates that sixteen federal
trademark registrations for computer software products
include the word “desktop” without a disclaimer of that
term, and that thirty-two computer software product
trademarks which include the word “remote” have been
registered without a disclaimer of that word. Applicant
argued that just because its mark consists of two generally
recognized words used in the computer field does not mean
that the mark in its entirety should be considered to be
incapable of identifying applicant’s goods and
Ser No. 75/218,102
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distinguishing them from similar products which emanate
from other sources.
The Examining Attorney was not persuaded by
applicant’s evidence or arguments. In her fourth Office
Action, she made final the refusal to register on the
Supplemental Register. Attached to this final refusal were
copies of the text from the specimen submitted by applicant
with the application as filed and copies of six pages
apparently from various Internet sites, wherein the term
“remote desktop” appears in connection with information
about computers. The term appears as part of phrases such
as “remote desktop configuration,” “remote desktop
managers,” “remote desktop protocol,” and, under the
heading of “REMOTE MANAGEMENT,” a specific reference to
applicant’s software is made by using the mark sought to be
registered.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs on
appeal, but applicant did not request an oral hearing
before the Board.
The sole issue before us in this appeal is whether
the term applicant seeks to register, “REMOTE DESKTOP,” is
generic in connection with the product specified in the
application, a “computer program which provides remote
Ser No. 75/218,102
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viewing, remote control, communications and software agent
distribution within personal computer systems and across
computer network systems.” While we find this to be a
close case, after careful consideration of the evidence and
arguments of record in this appeal, we find that the
Examining Attorney has not met her substantial burden in
establishing that this mark is unregistrable on the
Supplemental Register because it is incapable of
identifying and distinguishing applicant’s goods.
As the applicant points out, the Examining Attorney
bears a significant burden when refusing registration on
the ground that a mark is generic. She is required to
produce a “substantial showing” based on “clear evidence of
generic use” in order to establish that the term in
question is unregistrable on the Supplemental Register. In
re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143, (Fed. Cir. 1987). Any doubt as
to whether the term is capable of identifying and
distinguishing the products of an applicant must be
resolved in favor of the applicant. In re Grand
Metropolitan Foodservice, Inc. 30 USPQ2d 1974 (TTAB 1994).
Although the Examining Attorney cited the proper test
for genericness as the one laid out by the Court of Appeals
for the Federal Circuit in H. Marvin Ginn Corp. v.
Ser No. 75/218,102
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International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986), the evidence of record
in this appeal does not support her contention that the
elements of this test for genericness have been met.
The test is well known. First we must determine the
genus of goods or services in connection with which the
mark is used. Id. At 530. The second part of a test is to
resolve whether the term sought to be registered is
understood by the relevant public as referring primarily to
that genus of the goods or services. Id. It is the
Examining Attorney’s responsibility to provide evidence
which demonstrates that the principal significance of the
term is as an indication of the nature or class of the
particular product. Feathercombs, Inc. v. Solo Products
Corp., 306 F.2d 251, 134 USPQ 209 (2d Cir. 1962).
Instead of identifying the genus of goods that the
mark is used for, i.e., remote control software, the
Examining Attorney simply recites the goods as they are
identified in the application. Then she contends that the
mark is recognized by people who purchase computers as a
generic term for the goods, but the evidence of record
fails to establish that the term applicant seeks to
register is used or understood by anyone in the field of
computers as the generic name for software of the type
Ser No. 75/218,102
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specified in the application, i.e., remote control
software. It is clear from the evidence of record that
“remote desktop” can be used to refer to a computer which
is not physically near another computer or to the on-screen
display of a remote computer, but this record does not
contain evidence which establishes that “REMOTE DESKTOP” is
used generically in reference to applicant’s software.
“Remote access software” amd “remote control software”
would appear to be generic terms for this kind of computer
program, but the Examining Attorney has not shown that the
“REMOTE DESKTOP” is used, or is needed to be used, by
anyone as a name for the kind of software that allows
remote access to a computer.
In summary, although the mark sought to be registered
undoubtedly highly descriptive of the goods specified in
the application within the meaning of Section 2(e)(1) of
the Lanham Act, our doubts regarding whether the evidence
of record establishes that this term is generic for this
kind of software must be resolved in favor of the
applicant. Accordingly, registration on the Supplemental
Register is justified.1
1 On a different record, in an inter partes context, we might
reach a different conclusion.
Ser No. 75/218,102
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Decision: The refusal to register on the Supplemental
Register is reversed.
Ser No. 75/218,102
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