Platinum Technology, Inc.

Trademark Trial and Appeal Board

May 7, 1999

No. 74523161 (T.T.A.B. May. 7, 1999)

Paper No. 23
EWH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/7/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Platinum Technology, Inc.
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Serial No. 74/523,161
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Martin R. Greenstein of Techmark for Platinum Technology,
Inc.
Rita M. Odin, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Platinum Technology, Inc. (applicant) seeks to
register in typed drawing form PLATINUM BIND ANALYZER for
“computer software for use in the field of databases,
database management and administration, database design and
implementation, database query and reporting, programming
and application development, and instructional manuals
distributed therewith.” The application was filed on May
Ser No. 74/523,161
2
14, 1994 with a claimed first use date of April 15, 1993.
At the request of the Examining Attorney, applicant
disclaimed the exclusive right to use the word BIND.
It is the position of the Examining Attorney that the
word ANALYZER is descriptive of applicant’s goods, and
hence must also be disclaimed. Applicant takes the
position that the word ANALYZER is not descriptive of its
goods, and hence need not be disclaimed.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
First, as has been stated repeatedly, “a term is
merely descriptive if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of
the goods [or services].” In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) (emphasis
added); Abercrombie & Fitch Co. v. Hunting World, Inc., 537
F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
Ser No. 74/523,161
3
The Examining Attorney has never taken issue with
applicant’s contention that “virtually every software
product must do some kind of interim analysis or review of
data before it can operate properly. Such a broad term
[analyzer] identifying a necessary interim step of all
software can hardly be considered primarily merely
descriptive of applicant’s highly specific software.”
(Applicant’s brief page 3). See Examining Attorney’s brief
page 4. Moreover, the Examining Attorney has made of
record no dictionary listings or articles wherein the
composite term “bind analyzer” appears.
Accordingly, we find that the word ANALYZER is not
descriptive of applicant’s software because it simply fails
to convey any information concerning the qualities or
characteristics of applicant’s software with the required
“degree of particularity.”
We note that applicant has obtained registrations on
the Principal Register of the following marks for closely
related types of computer software without any disclaimer
of ANALYZER: PLATINUM RECOVERY ANALYZER; PLATINUM LOG
ANALYZER; PLATINUM DATABASE ANALYZER; and PLATINUM PLAN
ANALYZER. This Board has previously held that prior
“registrations, of course, may be used to indicate that a
commonly registered element has a suggestive meaning for
Ser No. 74/523,161
4
particular goods or services.” Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991). We
believe that applicant’s four existing registrations of
PLATINUM_ANALYZER for closely related computer software,
all of which registrations issued fairly recently in 1994
or 1995, are further evidence that the term ANALYZER is
simply not descriptive of computer software in that, as the
Examining Attorney concedes, all computer software must do
some analysis, and hence, the word ANALYZER simply does not
convey any information with the required degree of
particularity.
Of course, to the extent that there are doubts on the
issue of mere descriptiveness, said doubts are resolved in
favor of the applicant. In re Gourmet Bakers Inc., 173
USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.
E. W. Hanak
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board