Platinum Technology, Inc.

Trademark Trial and Appeal Board

Jul 11, 2000

No. 74719023 (T.T.A.B. Jul. 11, 2000)

Paper No. 21
TEH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 11, 00
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. 74/719,023
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Matthew W. Walch of Latham & Watkins for In re Platinum
Technology, Inc.
Wanda Kay Price, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Simms, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Platinum Technology, Inc.
to register MERGE/MODIFY as a mark for the following goods:1
Computer software for use in database design,
implementation, administration and management; database
query and reporting, and for programming and application

1 Serial No. 74/719,023; filed August 22, 1995 on the Principal
Register alleging dates of first use and first use in commerce in
February, 1995.
Ser No. 74/719,023
2
development, and instructional manuals sold as a unit
therewith.
Registration has been finally refused under Section 2(e)(1)
of the Trademark Act on the ground that applicant’s mark is
merely descriptive of applicant’s goods.2
Applicant has appealed. Briefs have been filed, but an oral
hearing was not requested. We affirm the refusal to register.
A term is merely descriptive within the meaning of Section
2(e)(1) if it immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with which
it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Moreover, the question of whether a particular term
is merely descriptive must be determined not in the abstract, but
in relation to the goods or services for which registration is
sought. See In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986).
The Trademark Examining Attorney contends that the wording
"MERGE/MODIFY," when considered in relation to the identified
goods, describes a "feature, function, characteristic, and use"
of applicant’s software, namely "that is used to merge and modify
data in databases." In support of her position, the Examining

2 The Examining Attorney issued a second Office action refusing
registration on the additional basis that MERGE/MODIFY does not
function as a mark. That refusal was subsequently withdrawn.
Ser No. 74/719,023
3
Attorney has relied on the product literature submitted by
applicant as well as listings from general and technical
dictionaries. One such listing defines "merge" as follows:
...[I]n word processing, the automatic recording, printing,
or sending onto one element of recording medium of selected
recorded text, in correct order, from at least two other
elements of recording media. IBM Dictionary of Computing
(10th ed. 1993).
In addition, we have taken judicial notice of the following
definition of "modify":3
(1) [t]o change the contents of a database. (2) To change
the logical structure of a database." IEEE Standard Computer
Dictionary (1990).
The Examining Attorney has also submitted numerous excerpts
of articles from the NEXIS database in which the words "MERGE"
and "MODIFY" appear. Examples of these articles are reproduced
below (emphasis added):
...you’ll hear a lot about 4.1’s directory-management tools.
For example, you’ll be able to merge NDS trees, and you’ll
be able to delete, modify, and move inside subtrees a lot
easier. All of these capabilities will be welcome,... PC
Week (August 29, 1994).
With these database programs, you’re not limited to looking
up data from other data files -- you can also modify data in
other files or even merge information from multiple data
files. But these capabilities require a more complex design
process than with flat-file-database... MacUser (November,
1993).

3 The Board may properly take judicial notice of dictionary
definitions, including definitions in technical reference works. See,
e.g., University of Notre Dame du Lac v. J. C. Gourmet Food Imports
co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 74/719,023
4
From a development perspective, this facility is helpful for
rapid prototyping, given the ease with which one can merge,
test, modify or delete program segments. Industrial
Management & Data Systems (1993).
’The C code allows you to: 1. Halt a merge so that you can
enter information, 2. Halt a merge so that you can modify a
secondary file. 3. Cancel the merge. 4. Find the next
record in the secondary file...’ MIS Quarterly (June 1992).
...computer for which it was designed (or backup computers
as appropriate) and the right to copy it for archival
purposes. The government can also modify the restricted-
rights software or merge it with other software,... EDN
(March 2, 1989).
The database is limited in its capacity to modify the
original database design. The only way to modify is to
create a new database based on the old and then incorporate
the changes. And, the database cannot perform calculations
on fields. PC Magazine (February 10, 1987).
The different varieties of workstation software still exist:
Full Notes Client offers the full capabilities of Notes with
the ability to modify database design; Notes Desktop offers
the same capabilities as the full client, except that users
cannot modify the design of databases;.... Network (1997).
Applicant, on the other hand, maintains that its software
does not "merge and modify data in databases." Applicant argues
instead, based on its product literature, that its mark
identifies a "highly specialized database software tool" which
"allows database users to quickly and efficiently provide backup
copies of the database without adversely impacting data
availability." It is applicant’s position that use of "the
single words ’merge’ and ’modify’...are entirely irrelevant to
Ser No. 74/719,023
5
whether the unitary term ’MERGE/MODIFY’ is descriptive of
applicant’s goods."4
It is clear from the above evidence that the words "merge"
and "modify" have well-recognized meanings in the computer
industry in the context of software design and function. As the
dictionary entries and NEXIS references show, software programs
frequently include capabilities that allow for the merging and
modification of documents or database contents as well as other
aspects of the software system. The particular "merge" and
"modify" features of applicant’s software products can be seen
from applicant’s own product materials (Italics reflect emphasis
in original; bold emphasis has been added):
PLATINUM Merge/Modify...Product Description:...recovery
product: it manages DB2 recovery by producing image copies
while data remains accessible to users; it merges copies at
record speeds; and it automates cleanup of the system
recovery table....Merge/Modify provides a change
accumulation feature for use in recovery....Benefits:
Reduces downtime by speeding up image copy merges and
modifications to recovery information.
Keep Your Data Available During Image Copy
Processing...Merge/Modify’s unique Log Accumulation facility
merges full and incremental copies with information from the
DB2 active and archive log datasets, creating a single,
fully consistent image copy...

4 Although some of applicant’s product literature was made of record
during the prosecution of the case, additional literature was attached
to applicant’s appeal brief. The Examining Attorney has treated this
evidence as of record and we have done so as well.
Ser No. 74/719,023
6
The term "MERGE/MODIFY" immediately describes significant
capabilities of applicant’s software product. We observe from
the literature that applicant’s software performs a merge
function as part of the document recovery process as well as the
function of accumulating changes or modifications to the content
of the recovered information. At a minimum, applicant’s software
speeds up the execution of these "merge" and "modify" functions,
clearly a touted benefit of applicant’s product. Notwithstanding
the "highly specialized" nature of applicant’s software products,
the relevant purchasers of applicant’s goods would be
technologically sophisticated individuals who would understand
the meaning of the term "MERGE/MODIFY" in relation to those
products.
We agree with the Examining Attorney that combining
the terms "merge" and "modify" does not alter the descriptive
significance of the individual words. In fact, we find that the
presence of the slash mark creates a separation of the two words
and reinforces the descriptive meaning of each of them in
connection with applicant’s goods. Thus, viewed either as
individual words or a combined phrase, MERGE/MODIFY immediately
conveys significant information to the relevant public about
applicant’s products.
Ser No. 74/719,023
7
The third-party applications and registrations submitted by
applicant are not persuasive of a different result.5 As the
Examining Attorney points out, one mark is registered on the
Supplemental Register, an acknowledgment that the term "MERGE" is
descriptive, another four of the registrations contain a
disclaimer of the word "merge," and at least two of the
applications have not even been published for opposition. The
remaining applications and registrations are for composite marks
which are different from the mark involved herein, and it has not
been demonstrated that they are even for the same goods as those
herein. Moreover, as often noted by the Board, each case must be
decided on its own facts. See In re National Novice Hockey
League, Inc., 222 USPQ 638 (TTAB 1984). Based on the facts and

5 Applicant attached to its appeal brief, a list of 12 third-party
registrations and 8 third-party applications which include the term
"merge" to "demonstrate the [registrability] of the coined term
’MERGE/MODIFY’ [for applicant’s goods]." Applicant has provided
information only as to the application/registration numbers, the marks,
and the broad statement that the registered marks "[cover] software
products." Additional information about a number of the applications
and registrations was disclosed by the Examining Attorney in her appeal
brief. We note that the Examining Attorney has not objected to either
the timeliness or the form of the third-party evidence, and in fact has
treated the evidence as being properly of record. Thus, we have
considered the evidence herein. Under the circumstances, applicant’s
alternative request to remand the application to the Examining Attorney
for consideration of the additional evidence is moot. Nevertheless, we
would point out that the remand request fails to include the necessary
showing of good cause. See TBMP § 1207.02 and cases cited therein.
Ser No. 74/719,023
8
the record before us in this case, we are convinced that
applicant’s mark is merely descriptive of its goods.
Decision: The refusal to register is affirmed.
R. L. Simms
P. T. Hairston
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board