Pure Storage, Inc.

Trademark Trial and Appeal Board

Apr 16, 2018

No. 87025123 (T.T.A.B. Apr. 16, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Pure Storage, Inc.
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Serial No. 87025112
Serial No. 87025123
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Nate A. Garhart of Cobalt LLP,
for Pure Storage, Inc.
Jordan A. Baker, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Bergsman, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Pure Storage, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark FLASHSTACK (in standard characters) for the services listed below:
Computer hardware and downloadable software for the
deployment and management of converged infrastructure
for compute, networking, and data storage functions;
computer hardware and downloadable software for
designing, monitoring, managing, securing, and optimizing
data, electronic and cloud data storage, and computer
networks, databases and other storage devices across
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computer networks, and instruction and user manuals
provided in connection therewith, in Class 9;1 and
Non-downloadable software and non-downloadable cloud-
based software for use in converged infrastructure (CI)
systems, and the storing, transmission, and reproduction
of data; non-downloadable software and non-downloadable
cloud-based software for use in the monitoring, managing,
updating, enhancing and troubleshooting of data storage
and converged infrastructure (CI) systems; data storage
services, namely, electronic data storage; information
technology consulting and technical support services,
namely, design of computer storage networks; technical
support services, namely, monitoring, and troubleshooting
in the nature of diagnosing problems with computers,
computer software and hardware, cloud computing, and
computer storage networks; consulting services in the field
of computer hardware and software for designing,
monitoring, managing, securing, and optimizing data,
electronic and cloud data storage, and computer networks,
databases and other storage devices across computer
networks; nondownloadable software for designing,
monitoring, managing, securing, and optimizing data,
electronic and cloud data storage, and computer networks,
databases and other storage devices across computer
networks, in Class 42.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark is merely descriptive of the identified goods and services because it
merely describes characteristics, features, or attributes of Applicant’s computer

1 Application Serial No. 87025112 was filed on May 4, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
2 Application Serial No. 87025123 was filed on May 4, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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hardware, software, and non-downloadable software and data storage services.3 In
essence, the Trademark Examining Attorney contends that because Applicant’s
products and services feature a converged infrastructure known as a “stack” with
flash storage capability, the component parts of Applicant’s compound mark retain
their descriptive significance thereby making the composite merely descriptive.4
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed. We affirm the refusals to register.
We consolidate the appeals because they were filed by the same applicant and
include common questions of fact and law. References to the record are to Serial No.
87025112 unless otherwise indicated. Also, citations to the TSDR database are to the
downloadable .pdf format.
A mark is merely descriptive of goods and services within the meaning of Section
2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see
also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark
is merely descriptive is determined in relation to the goods for which registration is
sought and the context in which the mark is used, not in the abstract or on the basis
of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ2d 215, 218 (CCPA

3 Trademark Examining Attorney’s Brief (9 TTABVUE 2-3).
4 Trademark Examining Attorney’s Brief (9 TTABVUE 6).
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1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, we
evaluate whether someone who knows what the goods are will understand the mark
to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need not
immediately convey an idea of each and every specific feature of the goods in order to
be considered merely descriptive; it is enough if it describes one significant attribute,
function or property of the goods. See In re Gyulay, 3 USPQ2d at 1010; In re
H.U.D.D.L.E., 216 USPQ2d 358, 359 (TTAB 1982); In re MBAssociates, 180 USPQ
338, 339 (TTAB 1973).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
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non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,
365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). In this regard, “incongruity is one of the accepted guideposts in the
evolved set of legal principles for discriminating the suggestive from the descriptive
mark.” In re Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc.,
199 USPQ 496, 498 (TTAB 1978) (the association of applicant’s mark TENNIS IN
THE ROUND with the phrase “theater-in-the-round” creates an incongruity because
applicant’s services do not involve a tennis court in the middle of an auditorium).
Thus, we must consider the issue of descriptiveness by looking at the mark in its
entirety.
It is the Examining Attorney’s burden to show, prima facie, that a mark is merely
descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In re
Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). If such a showing is made,
the burden of rebuttal shifts to the applicant. In re Pacer Tech., 338 F.2d 1348, 67
USPQ2d 1629, 1632 (Fed. Cir. 2003). The Board resolves doubts as to the mere
descriptiveness of a mark in favor of the applicant. In re Stroh Brewery Co., 34
USPQ2d 1796, 1797 (TTAB 1994).
First, we examine the evidence to determine the meanings that would be ascribed
to the components of Applicant’s mark – the words “Flash” and “Stack” – and then we
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examine the evidence to determine the meaning of the composite FLASHSTACK
when used in connection with Applicant’s goods and services. “[I]t is entirely
acceptable to consider the component parts of a composite mark when divining the
likely perception of the composite.” In re Petroglyph Games Inc., 91 USPQ2d 1332,
1336-37 (TTAB 2009).
The ENCYCLOPAEDIA BRITANNICA defines “Flash memory” as a data-storage
medium.
Flash memory, data-storage medium used with computers
and other electronic devices. Unlike previous forms of data
storage, flash memory is an EEPROM (electronically
erasable programmable read-only memory) form of
computer memory and thus does not require a power
source to retain the data.
Flash memory was invented in the early 1980s by Japanese
engineer Masuoka Fujio, who was then working at the
Toshiba Corporation and who was searching for a
technology that would replace existing data-storage media
such as magnetic tapes, floppy disks, and dynamic random-
access memory (DRAM) chips. The name flash was coined
by Ariizumi Shoji, a coworker of Masuoka, who said the
process of memory erasure, which can erase all the data on
an entire chip at one time, was like a camera’s flash.5
The evidence discussed below shows that “Flash” is a shorthand reference to
“Flash Storage” in the context of the relevant goods and services. (Emphasis added).

5 Flash Memory, ENCYCLOPAEDIA BRITANNICA (britannica.com) (November 24, 2017). The
Board may take judicial notice of information from encyclopedias. B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries
and encyclopedias may be consulted”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill Furniture
Indus. Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard
reference works).
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• WhatIs.com website (whatis.techtarget.com). 6
“Flash storage is any type of data repository or storage
system that uses flash memory.”
Flash memory is ubiquitous in small computing devices
and becoming more common for larger applications. The
size and complexity of flash-based systems varies for
storage in wearable computing devices, embedded systems,
smartphones, portable USB drives and more, all the way
up to enterprise-class all-flash arrays. Flash is packaged
in a variety of formats for different storage purposes.7
• Yellow Bricks website (yellow-bricks.com)
Hybrid, flash, converged storage, what’s next? Hybrid
storage stack? (June 19, 2013)
* * *
Just to clarify, “hybrid” in “hybrid storage stack” refers to
usage of flash for performance requirements and spindles
for capacity whereas “stack” refers to the fact that this
solution is not contained within a single box as opposed to
a hybrid storage device. So the first component obviously
would be host based flash caching, this would enable you
to meet your performance requirements.8
• The NetworkComputing website (networkcomputing.com) posted a news
article, excerpt below, discussing flash storage.
5 Elements Of The New Infrastructure Stack (September
30, 2015)
Stu Miniman teams up with Brian Gracely to explain why
containers, flash, hyperconvergance, OpenStack, and
virtual SAN are so important for today’s infrastructure.
* * *

6 May 21, 2016 Office Action (TSDR 27).
7 Id.
8 May 21, 2106 Office Action (TSDR 21).
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Flash
Many of the technologies discussed here are about helping
businesses go faster and when it comes to storage, flash is
(mostly) about speed. Not only the speed of storage but also
how that directly impacts business productivity. Flash
came back to the enterprise IT in 2008 – Wikibon9 believes
that we will see more innovation with the new flash
architecture in the next 4 years that we saw in the last 6.
Flash technology is seeing rapid adoption with hybrid and
all-flash arrays (AFA), another wave of solutions with
even higher performance and lower latency is coming as
Flash as Memory Extension (FaME).
Reality: Customers are well past asking “why” flash,
although there is not full comprehension as to the full
extent of leveraging flash and the impact of applications.
Flash is becoming prevalent in large public clouds,
including more all-SSD offerings from AWS and Azure
(Wikibon captures this in the hyperscale Server SAN
discussion). The vision of the all-flash data center is good,
there will still be a robust mix of performance and capacity
(See Wikibon’s Latency vs Capacity Storage Projections).
Reminder that there is no such thing as removing a
bottleneck, you just move it somewhere else (and if it isn’t
a component, check the people).10
• Applicant’s website points out that its FLASHSTACK products and services
feature “all-flash storage” providing “all-flash speed and reliability.”11
REV YOUR ROI
FlashStack brings the power and efficiency of all-flash
storage to your entire data center. With industry-leading
components from Cisco and VMWare, FlashStack is a

9 Wikibon (wikibon.org) identifies itself as “a professional community solving technology and
business problems through open source sharing of free advisory knowledge.” September 29,
2017 Denial of Request for Reconsideration. (5 TTABVUE 12).
10 November 29, 2016 Office Action (TSDR 37-38).
11 May 21, 2016 Office Action (TSDR 35).
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powerful and resilient converged infrastructure solution
that will dramatically shorten your time to value.12
* * *
FlashStack Mini provides small and midsize enterprises
with an affordable, easy-to-deploy all-flash converged
infrastructure solution, in just 9U.13
• Tom’s IT Pro website (tomsitpro.com) refers to Applicant as an “all-flash”
company.
Pure Storage [Applicant] Intros All-Flash Converged
Infrastructure with Single-Call Support (December 11,
2014)
Chances are, if you work in the IT industry the term “all-
flash” gets your blood pumping a little faster. Pure
Storage feels the same way. The all-flash storage
company today announced a new line of all-flash
converged infrastructure (CI) systems. The FlashStack Cl
solutions combine Pure Storage’s own flash arrays with
Cisco and VMware technologies.14
• IBM Systems Blog (ibm.com) posted a notice regarding IBM’s display at the
CiscoLive! Show, June 25-29, 2017 in Las Vegas referring to “the
performance of IBM all-flash storage.”15
• Tegile website (tegile.com) advertises its IntelliStack
converged infrastructure as being “available in both all flash
and hybrid configurations.”16

12 Id.
13 Id. at TSDR 36.
14 November 29, 2016 Office Action (TSDR 6).
15 September 29, 2017 Denial of Request for Reconsideration (5 TTABVUE 15).
16 September 29, 2017 Denial of Request for Reconsideration (5 TTABVUE 5 and 8).
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• DataCore Software (datacore.com)
Stash the Flash? (June 22, 2015)

The “flash everywhere” trend is actually materializing as
“flash where it makes economic sense.” George Teixeira,
CEO of DataCore Software, considers how a more mature
adoption of flash is now bearing fruit through a strategy
of cost-effective utilization of flash technology spreading
from servers to widespread usage across the board.
Flash seems to be finding its natural place in the storage
stack and is now gradually being reconciled with its
existing disk technologies. The “flash hype cycle” seems to
be slowing to a more realistic pace, noted largely through
resultant consolidation of flash manufacturers. This
necessary market consolidation illustrated that flash,
whilst recognized as a worthy game changer, needs to be
used as a more practical technology that could be
reconciled into existing disk technologies.
Indeed, flash has materialized as being excellent for
specialized workloads that require high speed reads such
as databases, but is not largely a cost-effective solution for
all workloads and still makes up a fraction of the overall
installed storage base.17
We find that “flash” is descriptive when used in connection with data storage
products and services.
In the context of the relevant goods and services, the word “stack” is a shortened
form of the term “converged stack” or “storage stack,” which is a “bundled storage
product that includes servers, networking components and server virtualization

17 September 29, 2017 Denial of Request for Reconsideration (5 TTABVUE 10).
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software.”18 The following third-party websites use the term “stack” descriptively in
this manner (emphasis added):
• Gestalt IT (gestaltit.com)

The Stack Wars Have Begun! (April 19, 2010)
… companies like Cisco, EMC, HP, and now HDS are
stepping up to the plate with integrated “stacks” that
include server, storage, networking, and management
software. The next-layer players, VMware and Microsoft in
particular, are joining hands, too, eager to support these
stacks.
* * *
What’s a Stack?
The largest IT infrastructure vendors are aligning their
own products and joining together in alliances to create
vertically-integrated “datacenter in a box” stacks that
include server, storage, networking, and higher level
software for virtualization and management.19
• Ascent (ascent.atos.net)
The Vertically Integrated stack dilemma (October 24,
2011)
* * *
A vertically integrated stack is a complete solution from a
single vendor or pre-packaged integrated bundle of
products from several vendors that provide an end-to-end
stack covering the compute, networking, storage &
virtualization components of the infrastructure layer and
optionally an additional application layer to provide a
completely integrated appliance.20

18 November 29. 2016 Office Action (TSDR 29) (Tech Target Network Definition
(searchstorage.techtarget.com).
19 November 29, 2016 Office Action (TSDR 51-52).
20 November 29, 2016 Office Action (TSDR 57-58).
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• PSSC Labs (pssclabs.com)
HyperC Stack
Combining IT components into a single, optimized
computing platform.21
• Tegile website (tegile.com) advertises its IntelliStack
converged infrastructure as “Not Just Another Stack.”22
• Computer Room Design (computer-room-design.com)
SimpliVity VDISolutions with OmniStack

* * *
SimpliVity OmniCube Hyperconverged Infrastructure
solution.
* * *
OmniCube stands apart. It’s not only a hyperconverged
infrastructure platform. OmniCube has data architecture
that uniquely addresses data efficiency and global
management requirements required in virtualized and
cloud environments. OmniCube’s single unified stack runs
on hyperconverged x86 building blocks, simplifying
infrastructure.23
• Tech Target Network (searchstorage.techtarget.com)
Choose an integrated stack for efficiency, easy storage
implementation (March 2012)
An integrated stack bundles servers, storage and
networking in a preconfigured product and is easy to install
and manage.
What you will learn: Also known as a converged stack, an
integrated storage stack, a stack is pretested and
preconfigured bundles storage product consisting of

21 November 29, 2016 Office Action (TSDR 61).
22 September 29, 2017 Denial of Request for Reconsideration (5 TTABVUE 5-6).
23 September 29, 2017 Denial of Request for Reconsideration (6 TTABVUE 6 and 9-10).
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servers, storage, networking components and server
virtualization software.24
We find that “stack” is descriptive when used in connection with converged
infrastructure.
We now turn to whether the composite term FLASHSTACK is merely descriptive
when used in connection with hardware, software and services in connection with
designing, monitoring, managing, securing, and optimizing data, electronic and cloud
data storage, and computer networks, databases and other storage devices. Based on
the evidence discussed above, as well as other evidence that has not been discussed,
we find that the components of the mark FLASHSTACK retain their descriptive
significance when used in connection with Applicant’s products and services.
Prospective users of Applicant’s products and services, if confronted with
FLASHSTACK used in conjunction with those goods and services, would, without the
need of thought, imagination or perception, be immediately apprised of the nature of
Applicant’s goods and services and a significant characteristic or attribute thereof
(i.e., that the hardware, software and services will utilize flash technology in a
bundled storage application).
Applicant advertises that its “FlashStack Mini provides small and midsize
enterprises with an affordable, easy-to-deploy all-flash converged infrastructure
solution.”25

24 November 29, 2016 Office Action (TSDR 18).
25 Applicant’s website PureStorage.com attached to the May 21, 2016 Office Action (TSDR
36).
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Two third-party websites listed below use the combined term “Flash Stack”
descriptively (emphasis added):
• DataCore Software (datacore.com)
Stash the Flash? (June 22, 2015)

* * *

Pooling Resources

… DataCore provides the most powerful enterprise-class
flash stack in the industry, as it is easy to create shared
storage pool out of the internal flash and disk storage
resources available to a server or to integrate flash or disks
that are located externally.
• Wikibon (wikibon.org)
Opportunity: The Veritas of the Flash Stack (February 12,
2012)
* * *
Action Item: FMC’s VFCache signals that a storage-centric
mode is in play to manage the emerging flash hierarchy.
While EMC will put forth a very strong story over time and
bring many resources to bear to promote its approach,
other models will test the market’s desire for a high
performance, persistent, highly available management
resource for the new “flash stack.”26
Applicant argues that the Trademark Examining Attorney did not and could not
provide a definition for “Flashstack” because it is a fanciful or arbitrary term.27 This
argument is unavailing for two reasons. First, the fact that a term is not found in a
dictionary is not controlling on the question of registrability if the examining attorney

26 September 29, Denial of Request for Reconsideration (5 TTABVUE 12-13).
27 Applicant’s Brief, pp. 3-4 (9 TTABVUE 4-5).
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can show that the term has a well understood and recognized meaning. See In re Gen’l
Permanent Wave Corp., 118 F.2d 1020, 49 USPQ 184, 186 (CCPA 1941) (“Because
appellant has combined two common English words, which in combination are not
found in the dictionaries, is wholly immaterial.”); In re Zanova Inc., 59 USPQ2d 1300,
1305 (TTAB 2001); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
Second, Applicant’s contention is untenable in light of the evidence summarized
above, including evidence from Applicant’s own website. Applicant offers no evidence
from which we can find that FLASHSTACK constitutes “an incongruous combination
of words.” The two components of the mark combine in a manner and order that would
be easily interpreted by consumers of the relevant hardware, software and services
as describing them because, as noted above, the relevant consumers will understand
that FLASHSTACK means a bundled storage application utilizing flash technology.
This impression would, indeed, be a correct one, because according to Applicant’s own
description of the product, it “provides small and midsize enterprises with an
affordable, easy-to-deploy all-flash converged infrastructure solution.” Applicant’s
mark as a whole is simply no greater than the sum of its descriptive parts.
We find that FLASHSTACK is merely descriptive within the meaning of Section
2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s mark FLASHSTACK is affirmed.