Shiva Corp.

Trademark Trial and Appeal Board

Oct 30, 1998

No. 75001460 (T.T.A.B. Oct. 30, 1998)

Paper No. 10
EWH/ak
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTTAB OCT. 20, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shiva Corporation
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Serial No. 75/001,460
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Elaine A. Martel for Shiva Corporation
Peter Cataldo, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney)
_______
Before Seeherman, Hanak and Hohein, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Shiva Corporation (applicant) seeks registration of
TARIFF MANAGEMENT in typed capital letters for “computer
hardware and computer programs to control, reduce and
render more efficient wide area network (WAN) usage and
printed user manuals sold therewith.” The intent-to-use
application was filed on October 4, 1995.
Ser No. 75/001,460
2
The Examining Attorney refused registration pursuant
to Section 2(e)(1) of the Lanham Trademark Act on the basis
that applicant’s mark is merely descriptive of applicant’s
goods.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
In support of his refusal, the Examining Attorney has
made of record excerpts from over 25 articles taken from
the NEXIS database wherein the phrase “tariff management”
appears. These stories demonstrate that the term “tariff
management” refers to computers and computer programs which
reduce the cost of telephone charges when it is necessary
to use a wide area network (WAN). For example, an excerpt
from the March 1, 1996 issue of IAC Newsletter states as
follows: “The program includes new SHIVAINTEGRATOR and
SHIVAPORT products that implement tariff management for
minimizing telephone charges over WAN links.” Another
excerpt from the May 1994 issue of Data Communications
contains the following sentence: “The SPIDERINTEGRATOR’S
tariff management features can help companies curb wide-
area transmission costs.”
It is applicant’s position “that the Examining
Attorney’s NEXIS evidence is not as persuasive as it might
Ser No. 75/001,460
3
first appear.” (Applicant’s brief page 4). Applicant notes
that the vast majority of the NEXIS stories refer to
applicant’s goods or the goods of applicant’s subsidiary.
Continuing, applicant acknowledges that “while it is true
that TARIFF MANAGEMENT is not consistently used in a proper
trademark manner in the stories, it is submitted that this
is the fault of the writers of the articles and not of
applicant.” (Id.).
We simply do not share applicant’s view. To begin
with, not one of the NEXIS stories uses the term “tariff
management” in a trademark manner. Rather, in the stories
the term “tariff management” describes a feature of a
computer or computer program that allows a company to
minimize its telephone charges by selecting the least
expensive carrier. As the excerpt from the April 1, 1996
issue of IAC Industry Express makes clear, “tariff
management” is simply a means for “reducing phone bills.”
Stated somewhat differently, none of the NEXIS stories
suggests in any way whatsoever that the term “tariff
management” acts as a source identifier (trademark)
indicating computer hardware and computer programs
originating solely from applicant. This is not a situation
where on occasion authors have inadvertently set forth a
trademark in all lower case letters, as opposed to all
Ser No. 75/001,460
4
upper case letters or initial capital letters. Indeed, a
careful review of the NEXIS excerpts reveals that what
appear to be applicant’s true proprietary terms
(trademarks) -- such as SHIVAINTEGRATOR, SHIVAPORT,
SPIDERINTEGRATOR and SPIDERPORT -- are universally depicted
in a proper trademark manner with initial capital letters.
Finally, we note that applicant has devoted the
majority of its brief to individual considerations of, on
the one hand, the word “tariff” and, on the other hand, the
word “management.” Applicant argues that “the word
‘management’ is as amorphous as ‘tariff’ is precise; it
generally means the control or organization of something.
The phrase TARIFF MANAGEMENT may suggest something about
the nature of applicant’s goods in terms of the general
concepts of cost-saving and efficiency, but it certainly
does not describe the goods.” (Applicant’s brief page 2).
Had the aforementioned NEXIS evidence not been made of
record, then we would have had to consider the individual
words “tariff” and “management” to determine whether their
combination resulted in a phrase which forthwith conveyed
information regarding applicant’s “computer hardware and
computer programs to control, reduce and render more
efficient wide area network (WAN) usage and printed user
manuals sold therewith.” However, because the NEXIS
Ser No. 75/001,460
5
evidence clearly demonstrates that the phrase “tariff
management” has been frequently used to identify a key
feature or function of the computer hardware and computer
programs set forth in applicant’s application, we simply
need not dwell on considering the individual meanings of
the words “tariff” and “management.” See In re Thunderbird
Products Corp., 406 F.2d 1389, 160 USPQ 730, 731 (CCPA
1969) (The term “cathedral hull” was held descriptive of a
type of boat based not upon the “usual … connotations of
the word [‘cathedral’],” but rather upon the fact that the
term “cathedral hull” as a whole had “entered general usage
to designate a particular type within the class of goods
for which registration [was] sought.”); Remington Products
v. North American Philips, 892 F.2d 1576, 13 USPQ2d 1444
(Fed. Cir. 1990) (The term “travel care” was held to be at
least descriptive based not upon a consideration of the
meanings of the individual words “travel” and “care,” but
rather upon the fact that the term “travel care” as a whole
had been used in a descriptive or perhaps generic manner.);
In re Digital Research Inc., 4 USPQ2d 1242, 1244 (TTAB
1987) (Literal dictionary definition of the word
“concurrent” was irrelevant to a consideration of whether
the “mark” CONCURRENT PC-DOS was descriptive of computer
programs given the fact that there was significant NEXIS
Ser No. 75/001,460
6
evidence showing the descriptive use of the entire term
“Concurrent PC-DOS”).
In conclusion, when there is evidence that two or more
words have been used together to form a phrase or term that
forthwith conveys information regarding the goods or
services set forth in the application, it is simply not
necessary to engage in an analysis of each of the
individual words in an effort to ascertain whether, when
used together, said words forthwith convey information
concerning the goods or services set forth in the
application.
DECISION: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial
And Appeal Board