Platinum Technology, Inc.

Trademark Trial and Appeal Board

Sep 18, 1998

No. 74529796 (T.T.A.B. Sep. 18, 1998)

Paper No.28
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/18/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Platinum Technology, Inc.
________
Serial No. 74/529,796
_______
Martin R. Greenstein of TechMark for applicant.
Cynthia H. Mancini, Trademark Examining Attorney, Law
Office 109 (Deborah S. Cohen, Managing Attorney).
_______
Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Platinum Technology, Inc. has filed an application to
register the mark PLATINUM INTEGRATOR for “computer
software for use in database design, implementation,
administration and management; database query and
reporting, and for programming and application development,
and instruction manuals sold as a unit therewith.”1

1 Ser. No. 74/529,796, filed May 26, 1994, based on a bona fide
intent-to-use. An amendment to allege use was filed July 25,
1994, alleging dates of first use of June 30, 1994.
Ser No. 74/529,796
2
Registration has been finally refused on the ground
that the term INTEGRATOR is merely descriptive, under
Section 2(e)(1) of the Trademark Act, of a purpose,
function, feature or characteristic of applicant’s computer
software and therefore must be disclaimed pursuant to
Section 6(a) of the Trademark Act.
Applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
The Examining Attorney takes the position that
applicant’s software combines several distinct functions,
namely the functions listed in the identification of goods,
into one program. Thus, in the Examining Attorney’s view,
the software “integrates” or serves as an “integrator” of
these functions. The Examining Attorney refers to
applicant’s advertisement, which was submitted during
prosecution, as evidence of the functioning of the software
to “integrate” independent elements of a computer system.
In particular, the Examining Attorney relies upon the
statements that
PLATINUM Integrator can access data regardless
of the data’s residence: IMS, CICS, DB2®, or any other
application on single or multiple subsystems.
PLATINUM Integrator processes through legacy
applications so there’s no need to re-engineer
them.
Ser No. 74/529,796
3
The Examining Attorney also refers to a news release
obtained from the Nexis database with respect to
applicant’s product which describes the software as
“… a new development tool that lets PC-based
programs access mainframe applications using the
Structured Query Language…” and “…uses SQL to tie
desktop and mainframe applications together.”
(CommunicationsWeek, August 29, 1994).
In further support of her position, the Examining
Attorney has submitted both general dictionary definitions
of “integrate” and “integrator”, as well as computer
dictionary definitions of “integrator” and “integrated
software”. In addition, the Examining Attorney has made of
record Nexis database articles which describe other
software products utilizing the term “Integrator”, namely,
the Database Integrator of Digital Equipment Corporation, a
“multi-database management product” (Networks Update,
August 1994) and the DB Integrator of DEC which “enables
users to access data on a variety of different systems
using Structured Query Language commands.” (Computergram
International, February 15, 1994). Other articles were
introduced showing varied uses of the term “integrator”,
including references to persons and companies who serve as
“integrators” or “systems integrators” for computer
software products and to software products which act as
“data integrators”.
Ser No. 74/529,796
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Applicant argues that none of the dictionary
definitions introduced by the Examining Attorney are
related to the functions of applicant’s software product.
Applicant further argues that there is nothing in its
literature or the identification of goods which suggests
that INTEGRATOR describes any of the features of its
software.2 Applicant contends that to go through the steps
of changing “systems integrator” – a person who sets up
computer systems - to “integrator” for software which can
convert or interchange data with other computer programs
necessarily makes applicant’s use of INTEGRATOR suggestive,
rather than merely descriptive.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic, use, function, or feature of the goods
with which it is being used. See In re Abcor Development

2 Applicant has noted in its brief several third-party
registrations for marks containing the term INTEGRATOR for
computer software products, without disclaimer of the term. The
Examining Attorney, in her objection to the evidence, pointed out
that copies of these registrations were not made of record by
applicant during the prosecution of the case. This is true,
except for the one registration which was made of record by the
Examining Attorney in connection with the 2(d) refusal which was
later withdrawn. Nonetheless, we agree with the Examining
Attorney that each case must be considered on its own merits, and
not on the basis of third-party registrations. This is
particularly true when it is a question of descriptiveness, since
this is uniquely tied to the particular goods or services at
issue. Thus, even if all of the third-party registrations were
considered, they are not persuasive in reaching a different
result in this case.
Ser No. 74/529,796
5
Corp. 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re
Bright-Crest Ltd., 204 USPQ 591 (TTAB 1979). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1987); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. Feb. 13, 1991).
We find that, on the record before us, the Examining
Attorney has failed to establish that INTEGRATOR is merely
descriptive of applicant’s computer software. The computer
dictionary definitions of “integrator” in terms of an
electronic circuit or electronic device, as well as the
definitions for software which is “integrated”, are not
applicable. The promotional literature supplied by
applicant, as well as the news release about its software,
in no way refers to applicant’s product as an “integrator”
nor describes its functions in term of integration. The
Examining Attorney has provided no basis for equating the
services of a person or company that acts as a “systems
integrator” with the functions of applicant’s computer
software product. Finally, although we recognize that
certain of the articles introduced by the Examining
Attorney show use by others of the term “Integrator” in
connection with software products which appear to be
similar to applicant’s software in function, we have no
Ser No. 74/529,796
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basis for concluding that these other parties are not also
using the term as part of a trademark, in a suggestive
manner. There is no evidence that “integrator” is used as
a term of art in the computer software field for products
of this nature. Cf. In re Intelligent Instrumentation
Inc., 40 USPQ2d 1792 (TTAB 1996)[Use of term “visual design
tools” in the relevant trade is evidence that VISUAL
DESIGNER aptly describes program for designing new or
custom applications via these tools.]
While the Examining Attorney has likened this case to
In re Time Solutions, Inc., 33 USPQ2d 1157 (TTAB 1994), we
cannot agree. In that case, the Board found the mark YOUR
HEALTH INSURANCE MANAGER merely descriptive of the
applicant’s software for personal record keeping of medical
and health insurance information on the basis of the
“everyday” meaning of the term “Manager”, whether or not
the computer definition was directly applicable, and on the
description by applicant in the advertising of its goods as
“ … software to manage your medical records and health
insurance.” Although the Examining Attorney argues that a
similar correlation may be made between the ordinary
dictionary definitions of the terms “integrate” and
“integrator” and applicant’s goods, we find no comparable
use of the term “integrate” or “integrator” in any of
Ser No. 74/529,796
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applicant’s advertising such that potential purchasers
would associate the term with the functions of applicant’s
software product. Thus, we find that the record falls
short in establishing that the term INTEGRATOR in
applicant’s mark immediately, and with a degree of
particularity, conveys information as to applicant’s
computer software, so as to be merely descriptive thereof.
We recognize that there is evidence that the term
“integrator” has at least some meaning in the computer
field. To the extent that this evidence casts doubt on
whether the term is merely descriptive of applicant’s
goods, we find it appropriate to resolve this doubt in the
favor of applicant, since any person who believes he would
be damaged by the registration of the mark will have the
opportunity to file an opposition thereto. See In re
Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re Gourmet Bakers,
Inc., 173 USPQ 565 (TTAB 1972).
Ser No. 74/529,796
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Decision: The refusal of registration without a disclaimer
of the term INTEGRATOR is reversed.
E. W. Hanak
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser No. 74/529,796
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