Unisys Corp.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 74716137 (T.T.A.B. Sep. 29, 1998)

Paper No. 9
GDH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 29,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Unisys Corporation
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Serial No. 74/716,137
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Thomas J. Scott, Esq. for Unisys Corporation.
Josette M. Beverly, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney).
_______
Before Cissel, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Unisys Corporation has filed an application to register
the term "SERVER/CLIENT" as a service mark for the "installation
of computer software, namely, a series of object-oriented
software development tools used to build programs, run and manage
networks" in International Class 37 and "computer software
consultation and computer programming for others of a series of
object-oriented software development tools used to build
programs, run and manage networks" in International Class 42.1

1 Ser. Number 74/716,137, filed on August 3, 1995, which alleges dates
of first use of April 24, 1995.
Ser. No. 74/716,137
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's services, the term
"SERVER/CLIENT" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested.2 We affirm the refusal to
register.
In support of her position, the Examining Attorney has
made of record and relies upon dictionary definitions of the
following terms:
"server," which in relevant part the IBM
Dictionary of Computing (10th ed. 1994) at
612 sets forth as "[a] functional unit that
provides shared services to workstations over
a network; for example, a file server, a
print server, a mail server" and the
Microsoft Press Computer Dictionary (2d ed.
1994) at 355 lists as, "[o]n a local area
network, a computer running administrative
software that controls access to all or part
of the network and its resources (such as
disk drives and printers). A computer acting
as a server makes resources available to
computers acting as workstations on the
network. Compare client"; and
"client," which in pertinent part the
former at 107 defines as "[a] functional unit
that receives shared services from a server"
and the latter at 75 signifies as meaning,
"[i]n object-oriented programming, a member
of a class (group) that uses the services of
another class to which it is not related.

2 Although applicant also appealed the mere descriptiveness refusal as
it pertained to the services of "advertising, promoting and marketing
of computer software of others via distributing advertising
information via electronic, hard copy and trade shows presentations"
in International Class 35, applicant states in its brief that it
"hereby amends the application to cancel the services recited in
International Class 35 in their entirety." In view thereof, the
application stands abandoned as to the services recited in
International Class 35.
Ser. No. 74/716,137
3
.... On a local area network, a computer
that accesses shared network resources
provided by another computer (called a
server)."
The Examining Attorney has also submitted as support
for her position a number of excerpts from the "NEXIS" database
in which the terms "server" and "client" are used. The following
examples are representative (emphasis added):3
"Server and client software comes on two
disks, and you install Imagery HSM at a
Microsoft Windows client." -- LAN Times,
March 4, 1996;
"The product combines the LanRover
remote access server and client software from
Shiva with the Integrator router ...." --
Newsbytes News Network, February 23, 1996;
"The world’s first free-of-charge secure
server/client software is available from
INTERWEB INC which incorporates the SSL
protocol and is complete with the Netscape
Commerce Server ...." -- Telecomworldwire,
February 6, 1996;
"Progressive Networks Inc. writes
server/client software to make the World Wide
Web sing-or at least talk." --Communications-
Week, January 8, 1996;
"OLAP also requires server and client
software." -- Computerworld, January 8, 1996;
"This product represents a major
opportunity for resellers, not just with the
installation and configuration of server and
client software, but with the training and
the likelihood of moving into advanced tools
for sales forces that are constantly on the
road." -- Computer Reseller News, December 4,
1995; and

3 While we note that the wire service articles may not have been
disseminated to the purchasing public, they nevertheless are an
indication of how those writing about developments in the software
trade would utilize the "server/client" terminology.
Ser. No. 74/716,137
4
"USoft Thursday announced two
server/client software product sets .... ’By
leveraging Actuate Reporting System
technology, we take an important step toward
assembling a comprehensive server/client
software environment, complete with the tools
end users need to quickly access key decision
support information,’ said Michael Seashols
...." -- Business Wire, November 30, 1995.
In light of the above, and in view of the fact that, in
its brief, applicant "readily acknowledges the extensive, well-
known use" of the terms "client/server software, server software,
client software, and server and client software"4 "in the
computer industry prior to its adoption and use of
SERVER/CLIENT," the Examining Attorney maintains that the term
"SERVER/CLIENT" is merely descriptive of applicant’s services.

4 We judicially notice in this regard the following definition of the
term "client/server architecture" from the Microsoft Press Computer
Dictionary (2d ed. 1994) at 75, which is set forth both in the
excerpts thereof made of record by the Examining Attorney in reliance
upon the definition of "client" and in the excerpt therefrom attached
to applicant’s brief:
An arrangement used on local area networks that makes
use of "distributed intelligence" to treat both the server
and the individual workstations as intelligent,
programmable devices, thus exploiting the full computing
power of each. This is done by splitting the processing of
an application between two distinct components: a "front-
end" client and a "back-end" server. The client component,
itself a complete, stand-alone personal computer (vs. the
"dumb" terminal found in older architecture such as the
time-sharing mainframe), offers the user its full range of
power and features for running applications. The server
component, which can be another personal computer, a mini-
computer, or a mainframe, enhances the client component by
providing the traditional strengths offered by
minicomputers and mainframes in a time-sharing environment:
data management, information sharing between clients, and
sophisticated network administration and security features.
It is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g. Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. No. 74/716,137
5
The Examining Attorney, in particular, argues that because "the
terms ’server’ and ’client’ are used in conjunction with one
another to refer to a type of data processing architecture" and
"applicant’s services feature server/client software products and
services, the proposed mark is merely descriptive."
Applicant, on the other hand, contends that its
combination of two generic terms results, due to its unique and
never before used "juxtaposition of the words in the common term,
client/server," in a mark which is suggestive of its services
inasmuch as "the emphasis in these software services is on the
server applications in a client/server environment."
Specifically, in support of its contentions, applicant has
submitted an evaluation by the ButlerBloor Organization which, in
addition to noting that "USoft is a wholly owned, but
independent, subsidiary of Unisys" and that "[f]or some time
Unisys has felt a need to move into the open systems,
client/server market-place," further states in describing and
evaluating the "Product Architecture" involved in applicant’s
services and associated goods that:
USoft calls itself the server/client
software company. This is well thought out.
It makes the reader stop and think. Most
particularly, it reflects the emphasis on the
server. Unlike some so-called competitive
products, which are really client development
tools and actually do very little at the
server level, USoft is server-centric. On
the other hand, USoft have [sic] not
neglected client performance either. In
particular, USoft applications should not
have the scalability problems associated with
some well known 4GLs. This is reflected in
USoft’s target markets, which range from
large workgroups up to enterprise-wide
applications.
Ser. No. 74/716,137
6
In view thereof, and in light of the admissions in its
brief, applicant essentially maintains that (emphasis and
underlining in original):
In fact, it is just this extensive,
well-known use of the terms, client/server
software, client-server software, server
software and client software, which provides
the basis of Applicant’s ingenuity in
creating the new mark, SERVER/CLIENT. If the
prior terms not been so well-known and
accepted by the computer industry, this new
mark, comprising in part, the juxtaposition
of the elements in the prior term[,] would
never have had the impact it has had.
Although this mark may be suggestive of the
type of establishment from which the services
emanate, it does not merely describe the type
of establishment from which the goods [sic]
emanate. This position is supported in the
ButlerBloor report wherein it states, "USoft
calls itself the server/client software
company. This is well thought out. It makes
the reader stop and think." These are the
words of persons well familiar with the
terms, client/server software, client-server
software, server software and client
software, and are evidence that it does take
imagination, effort, thought and an extra
mental step to make the association that
SERVER/CLIENT services[,] while provided for
products in a client/server environment[,]
are different.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
Ser. No. 74/716,137
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properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used on or in connection with those goods or services
and the possible significance that the term would have to the
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
In the present case, it is our view that, when applied
to applicant’s services of computer software installation,
computer software consultation and computer programming for
others of a series of object-oriented software development tools
used to build programs, run and manage networks, the term
"SERVER/CLIENT" immediately describes, without conjecture or
speculation, a significant feature or characteristic of
applicant’s services, namely, the server/client software
associated or produced for use therewith. As the dictionary
definitions and "NEXIS" excerpts make clear, there is nothing in
the combination of the words "SERVER" and "CLIENT" into the term
"SERVER/CLIENT" which is incongruous, indefinite, or even
"ingenious" about such term when considered in the context of
Ser. No. 74/716,137
8
applicant’s services, nor does the inclusion of the slash ("/")
between the component words make the combined term a registrable
mark. See, e.g., Johnson Controls, Inc. v. Concord Battery
Corp., 228 USPQ 39, 44 (TTAB 1985) and cases cited therein.
Clearly, to the administrators of local area networks
and others who develop, install and maintain such networks for
businesses and other enterprises, there is nothing in the term
"SERVER/CLIENT" which would require such purchasers and users of
applicant’s services to utilize imagination, cogitation or mental
processing or necessitate the gathering of further information in
order to perceive readily and precisely the merely descriptive
significance thereof. The individual words comprising the term
"SERVER/CLIENT" plainly have a meaning when combined which
ordinary usage would ascribe to those terms in combination and
the fact that such term is not found in the dictionary is not
controlling on the question of registrability. See In re Gould
Paper Corp., 824 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987)
and In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
In fact, inasmuch as applicant’s services are "server-
centric" in that the focus thereof is on the server rather than
the client, it is plain that reversing the constituent words in
the established terminology "client/server" to form the term
"SERVER/CLIENT" merely underscores the emphasis placed by
applicant on the server in enterprise-wide applications
development. Specifically, in referring to "A ROLE REVERSAL THAT
IS CHANGING THE COMPUTING INDUSTRY" applicant’s advertising
Ser. No. 74/716,137
9
literature, which it submitted as specimens of use, explains the
focus of its "SERVER/CLIENT" services in the following manner:
Introducing a new perspective on a
familiar concept. We call it SERVER/CLIENT.
It’s an architecture that balances the sizzle
of the first generation client/server
graphical screen generators with the power
and resources of the server environments.
USoft has harnessed this technology to
deliver the only adaptable solution for
planning, building and managing distributed
enterprise-wide business applications. Over
250 corporations, supporting up to thousands
of users worldwide, have discovered the
advantages of Server/Client applications.
Thus, as noted in the Examining Attorney’s brief:
The fact that the applicant has
transposed the terms "server" and "client"
from its commonly recognized designation
"client/server" does not make the use of the
terms any less descriptive. It is well
settled that the fact that an applicant may
be the first and only user of a merely
descriptive designation does not justify
registration if the term is merely
descriptive. In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
Therefore, the applicant’s objection to the
later usage of some third parties of the term
"server/client" is not persuasive. See In re
Lantech, Inc., [222 USPQ] 977, 979 (TTAB
1983). The term "server/client"
unequivocally projects a merely descriptive
connotation. As indicated by the examining
attorney and conceded ... by the applicant,
the public is already familiar with the terms
"server," "client," and the combined term
"client/server." The examining attorney
disagrees with the applicant[’s] assertion
that "it is just this ingrained familiarity
with the client/server term that gives the
mark, SERVER/CLIENT, its effectiveness as a
distinctive trademark." .... It is because
of this "ingrained familiarity" that it does
not take a vast amount of imagination or
mental pause for a prospective purchaser to
understand the meaning of the term
"server/client" when viewing the mark ... [in
association with] applicant’s services.
Ser. No. 74/716,137
10
Rather, in view of the common usage and
understanding of the combined terms "server"
and "client" in the computer industry, the
prospective purchaser of the applicant’s
services would immediately understand the
use, purpose or application of the
applicant’s services when viewing the mark
... [in connection therewith].
In particular, the "NEXIS" excerpts which refer to "server and
client software" make it clear that in the context of applicant’s
services, the term "SERVER/CLIENT" would not be regarded or
understood as so unusual or different as to be incongruous,
indefinite or even, as applicant asserts, "ingenious".
Accordingly, because the term "SERVER/CLIENT" conveys
forthwith a significant feature or purpose of applicant’s
computer software installation services, its computer software
consultation services and its computer programming services for
others, all of which are characterized by a series of object-
oriented software development tools used to build programs, run
and manage networks, it is merely descriptive of such services
within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. F. Cissel
E. J. Seeherman
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser. No. 74/716,137
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