Platinum Technology, Inc.

Trademark Trial and Appeal Board

Mar 31, 1999

No. 75051527 (T.T.A.B. Mar. 31, 1999)

Paper No. 17
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Platinum Technology, Inc.
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Serial No. 75/051,527
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Martin R. Greenstein for Platinum Technology, Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
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Before Cissel, Hohein and Hairston, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 31, 1996, applicant filed the above-
referenced application to register the mark “C/S-TEST” on
the Principal Register for “computer software for use in
the field of database design and administration,
programming, system administration and application software
development, testing and debugging in standalone,
distributed networking and client/server environments, and
instructional manuals sold as a unit therewith,” in Class
Ser No. 75/051,527
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9. The application was based on applicant’s assertion that
it possessed a bona fide intention to use the mark in
commerce.
The Examining Attorney refused registration under
Section 2(e)(1) of the Act on the ground that applicant’s
mark is merely descriptive of the goods specified in the
application because it describes the function of the
product, which is software for use in application software
testing in the client/server, or “C/S,” environment.
Attached to the Office Action in which the refusal to
register was made were copies of excerpts from published
articles retrieved from the Nexis database which show that
the abbreviation “C/S” is used interchangeably with
“client/server” in reference to the client server computer
environment. Examples include the following:
“Client/server (C/S) computing can indeed be a formidable
challenge…” and “…applications are implemented across
distributed Client/Server (C/S) configurations, business
applications and systems…”
Applicant responded to the refusal to register with
argument that its proposed mark is not merely descriptive,
but rather only suggestive. Applicant contended that the
Office has allowed other marks of third parties where “C/S”
is the first term in a two-term mark, as well as marks
Ser No. 75/051,527
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wherein the word “TEST” is combined with other “arguably
descriptive” words.
The Examining Attorney was not persuaded, and she made
the refusal to register final in her second Office Action.
Attached to that action was a copy of a definition of the
word “test” from the IBM Dictionary of Computing (10th ed.)
as “the operation of a functional unit and comparison of
its achieved result with the defined result to establish
acceptability.”
On May 30, 1997, applicant filed an amendment to
allege use of the mark on the specified goods in interstate
commerce since February 7, 1996.
Applicant timely filed a Notice of Appeal on September
15, 1997. Both applicant and the Examining Attorney filed
briefs, but applicant did not request an oral hearing
before the Board.
A mark is merely descriptive of the goods on which it
is used if it immediately and forthwith conveys information
about the product’s character, function, features or
purpose. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary that a term describe all of the
purposes, functions, characteristics or features of the
goods in order for it to be merely descriptive of them. In
re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982).
Ser No. 75/051,527
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The mark sought to be registered in the instant case,
“C/S-TEST,” is merely descriptive of software for use in
testing in the client/server environment because the mark
identifies the function or purpose of the software, i.e.,
to test application software in the client server
environment. The materials made of record by the Examining
Attorney make it clear what “C/S” and “TEST” mean, and the
fact that the two terms are joined by a hyphen does not
alter their connotation.
Applicant argues that reaching this conclusion about
the goods from consideration of the mark cannot be
accomplished without taking “mental steps” or engaging in
“extensive mental gymnastics.” We agree with the Examining
Attorney that this is just not the case. A prospective
purchaser of applicant’s computer programs who knows that
their function or purpose is “application software
development, testing and debugging in standalone,
distributed networking and client/server environments,” as
the identification-of-goods clause puts it, will
immediately and forthwith understand from the mark that the
programs are used to test application software in the C/S
environment.
Applicant argues that third-party registrations of
other marks for different goods support the proposition
Ser No. 75/051,527
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that the mark in the instant application is not descriptive
of the goods named in this application. It is well
settled, however, that each case must be decided on its own
merits, based on the record in each particular application.
As the Examining Attorney points out, a mark which is
merely descriptive is not somehow registrable simply
because other similar marks are registered. In re
Scholastic Testing Services, Inc., 196 USPQ 517 (TTAB
1977). It is true that third-party registrations, when
they are properly of record, can be useful in establishing
the meanings of terms used in them, but applicant did not
make of record any of the registrations it argues support
the registration of its mark. The Board does not take
judicial notice of registrations. In re Duofold Inc., 184
USPQ 638 (TTAB 1974).
When the mark in the instant application is considered
in conjunction with the goods identified therein, it is
clear that the mark conveys specific information about the
Ser No. 75/051,527
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function or purpose of the goods. Accordingly, the refusal
to register under Section 2(e)(1) of the Act is affirmed.
R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges
Trademark Trial and Appeal Board
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