New Paradigm Software Corp.

Trademark Trial and Appeal Board

Apr 17, 1998

No. 74467612 (T.T.A.B. Apr. 17, 1998)

Paper No. 24
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 17,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re New Paradigm Software Corporation
________
Serial No. 74/467,612
_______
Philip Furgang of Furgang & Milde, LLP for New Paradigm
Software Corporation.
Margaret Le, Trademark Examining Attorney, Law Office 109
(Deborah Cohn, Managing Attorney).
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On December 9, 1993 New Paradigm Software Corporation
filed an intent to use application to register the mark
shown below,
Serial No. 74/467,612
2
for goods which were identified as “computer programs and
manuals sold as a unit.”1 In her first office action, the
Examining Attorney required that applicant amend the
identification of goods to specify the function of the
computer programs. In response thereto, applicant amended
the identification of goods to “database driven software and
manuals therefor.” However, the amended identification of
goods was unacceptable, and the Examining Attorney, in her
second office action, stated:
The amendment to the identification of goods
is not sufficient. The identification remains
indefinite as “data driven software” is not a
specific function of the software. The
applicant must amend the identification to
identify the exact function of the software.
The following wording many be adopted, if
accurate: computer software for use to
[please identify exact function] and manuals
sold as a unit.
Applicant then amended the identification of goods to
“computer software capable of having its functionality
changed in real time by changing the data in a configuring

1 Application Serial No. 74/467,612, subsequently amended to
allege a date of first use and a date of first use in commerce of
August 29, 1994. The drawing is lined for the colors red, blue,
yellow, purple, orange and green.
Serial No. 74/467,612
3
database and manuals therefor.”
The Examining Attorney has finally refused registration
on the ground that “[t]he identification of goods remains
unacceptable as indefinite.”
Applicant has appealed. Briefs have been filed, but no
oral hearing was requested.
According to the Examining Attorney, applicant’s sales
brochure clearly shows that applicant’s computer software
allows software applications to share information even when
they are operating on different hardware platforms and
operating systems. Thus, it is the Examining Attorney’s
position that applicant’s identification of goods should be
amended to set forth this specific function.
Applicant, however, contends that its software is
patented or is the subject of pending patent applications in
at least 34 countries; that the sales brochure provided to
the Examining Attorney explains “only one formative or
configuration” of applicant’s computer software; and that
applicant should not be required to restrict its
identification of goods to this one embodiment. In support
of its position, applicant relies on the following paragraph
of TMEP Section 804.03:
As long as a broad term identifies with
reasonable certainty what goods or services
are intended to be covered, it will be
reasonable, from a commercial viewpoint to
consider that the mark has been used for all
Serial No. 74/467,612
4
the related goods or services, which fall in
the designated group.
The problem with applicant’s argument is that it
ignores subsection (b) of TMEP Section 804.03 titled
Identifying Computer Programs with Specificity.2 TMEP
Section 804.03, on which applicant relies, consists of
several paragraphs, and applies to identifications of goods
generally. We note that applicant has taken the above
paragraph from Section 804.03 out of context.
Turning then to TMEP Section 804.03(b), it provides, in
relevant part:
Any identification of goods for computer
programs or comparable goods must be
sufficiently specific to permit determinations
with respect to likelihood of confusion.
The purpose of requiring specificity in
identifying computer programs is to avoid
unnecessary issuance of refusals on this
basis where the actual goods of the parties
are not related and there is no conflict
in the marketplace. (citation omitted)
. . . . .
If an applicant asserts that the computer
programs at issue serve a wide range of
diverse purposes, that is, if applicant is,
in effect, asserting that the mark is used
as a house mark for a full line of computer
programs, the applicant must submit
appropriate evidence to substantiate such

2 We note that it was not until her appeal brief that the
Examining Attorney cited TMEP Section 804.03(b) as authority for
the requirement to amend the identification of goods to specify
the function of the computer software. In the first and second
office actions, no authority was cited, and in the final office
action, TMEP Section 804 was cited. This section covers
application requirements generally. The better practice would
have been for the Examining Attorney to cite TMEP Section
804.03(b) in the first office action.
Serial No. 74/467,612
5
a broad identification of goods.
In this case, we agree with the Examining Attorney that
applicant’s identification of goods is not sufficiently
specific. While applicant has set forth an operating
feature of its computer software (i.e., capable of having
its functionality changed in real time by changing the data
in a configuring database), it does not appear that this
information would be helpful to an Examining Attorney in a
likelihood of confusion determination. Rather, in the
absence of additional language which sets forth the
particular function of applicant’s computer software (i.e.,
allows software applications to share information even when
they are operating on different hardware platforms and
operating systems), we believe it would be difficult, if not
impossible, to make determinations with respect to
likelihood of confusion.
Finally, to the extent that applicant is asserting that
its computer software serves a wide range of purposes, and
thus a broad identification of goods is appropriate, this
assertion is not supported by the sales brochure, and
applicant has failed to submit any other evidence which
would support such an assertion.
Serial No. 74/467,612
6
Decision: The refusal to register is affirmed.
R. L Simms
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Serial No. 74/467,612
7