Bell & Howell Document Management Products Co.

Trademark Trial and Appeal Board

Apr 2, 1998

No. 74166555 (T.T.A.B. Apr. 2, 1998)

Hearing: Paper No. 29
April 8, 1997 EWH/TF
4/2/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bell & Howell Document Management Products Company
________
Serial No. 74/166,555
_______
Howard B. Rockman of Welsh & Katz, Ltd. for applicant.
Mary Crawford, Trademark Examining Attorney, Law Office 102
(Mickey Kurzbard, Managing Attorney)
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Bell & Howell Document Management Products Company
(applicant) seeks registration of IMAGE SEARCH in typed
capital letters for “microfilm computer-assisted document
management and retrieval system, comprising microfilm
camera, microfilm reader/printer, computer record server,
computers, computer monitors, computer printers and system
software, all for the storage, retrieval and management of
documents and information.” The application was filed on
May 13, 1991 with a claimed first use date anywhere and in
commerce of March 31, 1987.
Ser No. 74/166,555
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The Examining Attorney has refused registration on the
basis that the term IMAGE SEARCH is generic. In addition,
the Examining Attorney contends that “the evidence submitted
[by applicant] to support a showing of [acquired]
distinctiveness is … insufficient even if the term ‘image
search’ is capable of registration.” (Examining Attorney’s
brief page 2).
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs and were present at a hearing before this Board on
April 8, 1997.
Applicant and the Examining Attorney agree that there
are two issues before this Board. First, is the term IMAGE
SEARCH generic for the goods set forth in applicant’s
application? Second, if the term IMAGE SEARCH is not
generic but merely descriptive for said goods, has this term
acquired distinctiveness such that it now functions as a
trademark to identify applicant’s goods and distinguish
these goods from the goods of others? (Applicant’s brief
page 3; Examining Attorney’s brief page 2).
It has been repeatedly stated that “determining whether
a mark is generic … involves a two-step inquiry: First,
what is the genus of goods or services at issue? Second, is
the term sought to be registered or retained on the register
understood by the relevant public primarily to refer to that
Ser No. 74/166,555
3
genus of goods or services?” H. Marvin Ginn v.
International Association of Fire Chiefs, 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Of course, in a proceeding
such as this, the genus of goods at issue are the goods set
forth in the description of goods in the application itself.
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552 (Fed. Cir. 1991) (“Thus, a proper genericness inquiry
focuses on the description of [goods or] services set forth
in [the application or] certificate of registration.”). The
fact that the term IMAGE SEARCH may be generic for goods
which are similar to or even closely related to the goods as
described in the application does not establish that IMAGE
SEARCH is also generic for the latter goods. By way of
example, the fact that the term TOUCHLESS was generic for
automobile washing equipment did not establish that said
term was likewise generic for automobile washing services.
Magic Wand, 19 USPQ2d at 1553. Cf. In re The Stroh Brewery
Co., 34 USPQ2d 1796, 1797 (TTAB 1995)(“In addition, the fact
that a term may be descriptive of certain types of goods
does not establish that it is likewise descriptive of other
types of goods, even if the goods are closely related.”).
Thus, the burden rests with the Examining Attorney to
establish that the mark sought to be registered is generic
for the goods as described in the application. In re
Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
Ser No. 74/166,555
4
1997). Moreover, it is incumbent upon the Examining
Attorney to make a “substantial showing … that the matter is
in fact generic.” Merrill Lynch, 4 USPQ2d at 1143. Indeed,
this substantial showing “must be based on clear evidence of
generic use.” Merrill Lynch, 4 USPQ2d at 1143. Thus, it is
beyond dispute that “a strong showing is required when the
Office seeks to establish that a term is generic.” In re
K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788
(Fed. Cir. 1994). Moreover, any doubt whatsoever on the
issue of genericness must be resolved in favor of the
applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB
1993).
The record in this case dates to 1991 and is, to say
the least, quite massive. In support of her contention that
IMAGE SEARCH is generic, the Examining Attorney has made of
record a large number of excerpts of articles and a few full
text articles taken from the Nexis database. The time
period for these excerpts and articles spans from 1983 to
1994. However, most of these excerpts and articles are from
the 1990’s. There is a small minority of excerpts and
articles from the 1980’s. This distinction is of importance
because with regard to the excerpts and articles from the
1990’s, the vast majority of them use the term “image
search” in a descriptive manner to describe a category of
systems which, as will be discussed in greater length in a
Ser No. 74/166,555
5
moment, are quite different from applicant’s IMAGE SEARCH
document management and retrieval system. On the other
hand, some of the excerpts and articles from the 1980’s use
the term “image search” in a descriptive manner to describe
systems which apparently are somewhat similar to applicant’s
system. We use the term “apparently” because even the
Examining Attorney, in discussing these 1980’s excerpts and
articles, has stated that said excerpts and articles concern
“systems [which] appear to be of the same genus as the
applicant’s system.” (Examining Attorney’s brief page 12,
emphasis added). We will begin our analysis with the vast
majority of excerpts and articles from the 1990’s which use
the term “image search” to describe systems which are quite
different from applicant’s system, and then conclude our
analysis by considering the limited number of excerpts and
articles from the 1980’s which use the term “image search”
to describe systems which appear to be somewhat similar to
applicant’s system.
In reviewing the 1990’s evidence, it is clear that
“image search” is a descriptive term for a certain type of
product. However, the type of product for which the term
“image search” is descriptive is not the product described
in the application. At a minimum, the Examining Attorney’s
1990’s evidence simply does not constitute the “substantial
showing” (Merill Lynch) or the “strong showing” (K-T Zoe)
Ser No. 74/166,555
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required to prove that applicant’s mark IMAGE SEARCH is a
generic term for applicant’s goods as described in the
application.
As previously noted, applicant’s description of goods
is as follows: “microfilm computer-assisted document
management and retrieval system, comprising microfilm
camera, microfilm reader/printer, computer record server,
computers, computer monitors, computer printer and system
software, all for the storage, retrieval and management of
documents and information.” Stripping away the recitation
of the components and the somewhat redundant final verbiage,
applicant’s goods are a “microfilm computer-assisted
document management and retrieval system.”
Applicant has been quite forthright in submitting for
the Examining Attorney’s inspection large amounts of
literature describing applicant’s IMAGE SEARCH microfilm
computer-assisted document management and retrieval system.1

1 The dissent disparagingly accuses the majority of giving “lip
service to the principle that the issue of
descriptiveness/genericness should be evaluated in terms of the
identification [of goods] in the application.” Suffice it to say
that the identification of goods is a full and accurate
description of applicant’s actual goods. The identification was
carefully considered by the Examining Attorney in Office Action
Nos. 1, 2 and 3. In actions 2 and 3, the Examining Attorney had
the benefit of being able to review the aforementioned large
amounts of product literature forthrightly provided by applicant.
Unlike the dissent, the Examining Attorney in her brief never
even suggested that the issue of genericness would be decided
differently based upon whether the focus was on applicant’s
actual goods or on applicant’s identification of goods. Indeed,
quite to the contrary, the Examining Attorney stated that the
relevant “genus of goods includes the ‘applicant’s goods
Ser No. 74/166,555
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Put in simple terms, such a document management and
retrieval system works in the following fashion. Documents
(i.e. letters, invoices, patient records etc.) are
microfilmed. The microfilmed versions of the documents are
then indexed according to the guidelines established by
applicant’s customers, usually with the assistance of
applicant. For example, one of applicant’s customers may
wish to index letters by author, recipient, subject matter
and date. This indexing is done with a computer, and the
indexed, microfilm version of the document is entered into a
computer system. When the microfilm version of the document
needs to be retrieved, an image of the document appears on a
computer screen. The computer screen could be located in
the same building as the main computer containing all of the
indexed documents, or it could be located thousands of miles
away from the main computer. Moreover, more than one
employee of applicant’s customer can retrieve or access the
same indexed, microfilm document at the same time. Thus, an

specifically’ as stated in the identification of goods.”
(Examining Attorney’s brief page 8).
In view of the above, it appears that the dissent refuses to
adhere to the Board’s practice of resolving questions of
genericness in applicant’s favor. That is to say, given the full
and accurate identification of goods, it is hard to fathom how
the dissent can be so certain that IMAGE SEARCH is generic with
respect to the identification of goods when the dissent concedes
that, at a minimum, IMAGE SEARCH “may not be generic with respect
to applicant’s actual [goods].”
Ser No. 74/166,555
8
employee in New York could retrieve or access the identical
document which is simultaneously being retrieved or accessed
by an employee in San Francisco. The vast majority of
documents entered into applicant’s IMAGE SEARCH system
consist of text and not pictures, although some documents do
consist of text and simple pictorial representations.
However, the key to applicant’s IMAGE SEARCH system is the
initial indexing. For example, if a letter has been indexed
only by author, recipient, subject matter and date, it
cannot be later retrieved by searching for copy recipients.
Applicant’s IMAGE SEARCH document management and retrieval
system cannot retrieve all documents mentioning, for
example, Mr. Jones somewhere in the bodies of the documents.
Rather, said system can only retrieve those documents which
were initially indexed under the name Mr. Jones. Likewise,
applicant’s system is unable to search for all documents
containing the pictorial representations of a certain item.
In reviewing the numerous 1990’s excerpts and articles
from the Nexis database made of record by the Examining
Attorney, it appears that the descriptive term “image
search” is used to describe various related systems which
are simply not the document management and retrieval system
described in the application. Because many of the excerpts
made of record by the Examining Attorney are very truncated,
it is difficult to state with certainty the precise nature
Ser No. 74/166,555
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of the systems for which the term “image search” is
descriptive. However, it appears that the descriptive term
“image search” is used to describe large photographic
libraries which are placed on computers and which can be
accessed by multiple customers of the owner of the library.
For example, in the December 13, 1993 issue of InfoWorld
there appears an article entitled “Kodak Picture Exchange
offers browsing of stock photo CDs.” The very truncated
excerpt of that article reads, in part, as follows: “For
$399, customers receive Kodak’s access software and are
charged $1.42 per minute for conducting image searches.” An
article in the October 1992 issue of Information Today
speaks of a company founded by Bill Gates whose “technology
makes image searches easier and quicker for the user.”
Continuing, the article notes that “these developments make
possible the creation of vast libraries of visual
information. People will be able to access an image on a
display screen as easily as they pull a book from a library
shelf.” The article states that the beneficiaries of such
technology would include museums, schools, publishers,
businesses and individuals. The article then notes that
“individuals may access image databases in their homes as
visually oriented tools for learning, discovery and
entertainment. For example, people could select images of
Ser No. 74/166,555
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historical or current events to have delivered to them
electronically.”
Another article discusses a more sophisticated product
“still in its infancy that will allow users to search for an
image stored in a database, such as a film library, based on
the image content,” as opposed to searching for images by
words or file names. See Network World of April 27, 1992.
This more sophisticated system would allow subscribers to
the library to search for all pictures containing, for
example, the representation of an elephant, as opposed to
being limited to word searches where some pictures
containing the representation of an elephant were indexed
under the word “elephant,” and others were not.
The foregoing products described in the 1990’s excerpts
and articles submitted by the Examining Attorney wherein the
words “image search” are used in a descriptive fashion are
quite different from applicant’s IMAGE SEARCH microfilm
computer-assisted document management and retrieval system.
There are a number of differences, but two differences stand
out. First, the products described in the 1990’s excerpts
and articles submitted by the Examining Attorneys are
libraries available, usually for a fee, to a virtually
unlimited number of customers. These libraries described in
the Examining Attorney’s evidence have pictorial images
which are of interest to a significant number of
Ser No. 74/166,555
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subscribers. Moreover, there is nothing “confidential”
about the images in these libraries. In contrast,
applicant’s IMAGE SEARCH computer-assisted document
management and retrieval system is designed to contain
proprietary documents which can only be accessed by
employees of the owner of said documents.
Second, the products described in the 1990’s excerpts
and articles made of record by the Examining Attorney
contain pictures, such as famous works of arts, clip art
etc. Subscribers to these libraries are truly searching for
particular images or pictures. In contrast, the material in
applicant’s IMAGE SEARCH system consists primarily of
documents containing exclusively text. While there is no
doubt that documents containing diagrams or other pictures
could be placed into applicant’s IMAGE SEARCH document
management and retrieval system, this does not mean that
applicant’s system serves as a pictorial library.
We now turn to consider the small minority of excerpts
and articles submitted by the Examining Attorney from the
1980’s. As previously noted, some of these excerpts and
articles use the term “image search” to describe products
which appear to be similar to applicant’s IMAGE SEARCH
document management and retrieval system. One such article
is from the February 1985 issue of Modern Office Technology.
The title of the article is “A Marriage Made in Charleston;
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Electronic filing at Union Carbide,” and the article reads,
in part, as follows: “Electronic filing … is at the heart
of the new accounts payable information management system at
Union Carbide’s sprawling South Charleston, West Virginia,
complex. Computer terminals throughout the facility and in
locations as far away as Louisiana and New Jersey are now
used as remote request terminals for finding and retrieving
documents stored on microfilm. The system lets Union
Carbide capitalize on microfilm’s ability to store virtually
unlimited quantities of information … while tapping an IBM
370 computer’s power to index, sort, and search. … The
relatively new filing system replaces a less sophisticated
microfilm system. The old system required those who wanted
paper copies of stored data to fill out forms, or go to
retrieval centers for document image searches.” Obviously,
the product described in this February 1985 article, as well
as a few other products described in some of the other
articles from the 1980’s, appear to be similar to
applicant’s IMAGE SEARCH document management and retrieval
system. However, in none of these excerpts or articles from
the 1980’s is the term “image search” used as a generic term
for the name of any product. Rather, the term “image
search” is used simply to describe one aspect of these
products. Indeed, in reviewing this February 1985 article,
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it appears that if there is any generic term for the product
discussed, said generic term is “electronic filing.”
Thus, while some of the excerpts and articles from the
1980’s (which represent a small minority of the Examining
Attorney’s evidence) discuss products which appear to be
similar to applicant’s system, the important point to
remember is that when the term “image search” is used, it is
used not as the generic name for a product. Rather, it is
used simply to describe an aspect of the products.
Moreover, the issue before this Board “is whether
[IMAGE SEARCH] is now the common descriptive or generic name
for applicant’s” document management and retrieval system.
In re Montrachet, 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed.
Cir. 1989) (emphasis added). Even if some of these 1980’s
excerpts and articles had used the term “image search” as
the generic name for a product similar to applicant’s system
(which they did not), the 1980’s excerpts and articles would
not be sufficient to prove that applicant’s mark IMAGE
SEARCH is currently the generic name for applicant’s system,
especially in light of the fact that the vast majority of
the excerpts and articles submitted by the Examining
Attorney (i.e. those from the 1990’s) now use the term
“image search” to describe a function of products which are
totally different from applicant’s IMAGE SEARCH document
management and retrieval system.
Ser No. 74/166,555
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Having determined that the Examining Attorney has
simply not made the “substantial showing” or “strong
showing” required to prove that IMAGE SEARCH is now the
generic term for the goods identified in applicant’s
application, or indeed is the generic term for any goods, we
will now consider whether or not applicant has established
that the descriptive term IMAGE SEARCH has become
distinctive of its goods pursuant to Section 2(f) of the
Lanham Trademark Act. In support of its claim of acquired
distinctiveness, applicant relies upon the fact that not
only has it made continuous use since March 1987 of its mark
IMAGE SEARCH on computer-assisted document management and
retrieval systems, but in addition upon the fact that it has
used this same mark since 1981 on microfilm reader/printers.
Moreover, applicant submitted the October 9, 1992
declaration of Larry Turner, its product manager for its
IMAGE SEARCH products. Mr. Turner declared that not only
had applicant sold as of June 30, 1992 over $9.2 million
worth of IMAGE SEARCH document management and retrieval
systems, but in addition, applicant had sold since 1981 over
$8.3 million worth of IMAGE SEARCH microfilm
reader/printers. Furthermore, Mr. Turner declared that
applicant’s IMAGE SEARCH products are not products which are
sold to ordinary consumers, but rather are products which
are sold to a relatively limited number of institutions
Ser No. 74/166,555
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which have the need to manage large amounts of documents.
These institutions would include the U.S. Department of
Defense, local police departments, banks and hospitals.
Thus, applicant argues that its sales figures are quite
substantial given the limited customer base for its IMAGE
SEARCH products.
In addition, applicant also relies upon the numerous
brochures, owner manuals and advertisements for its IMAGE
SEARCH products which were discussed earlier in this opinion
as further proof that IMAGE SEARCH has acquired
distinctiveness among this rather narrow customer base.
Moreover, applicant has made of record a number of articles
from technical and professional journals which discuss
applicant’s IMAGE SEARCH computer-assisted document
management and retrieval system.
Finally, applicant has submitted three additional
declarations. One of these declarations is from an employee
of a large hospital which utilizes applicant’s IMAGE SEARCH
document management and retrieval system. The other two
declarations are from managers of two different companies
which distribute document management systems. All three
individuals state that they, and to the best of their
knowledge, the individuals that they deal with, recognize
IMAGE SEARCH as a trademark of applicant. Furthermore, the
declaration of one of the two distributors (Gene Erfeldt)
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further confirms applicant’s assertion that the customer
base for applicant’s IMAGE SEARCH document management and
retrieval system is quite limited. Mr. Erfeldt states, in
part, as follows: “[Applicant’s] IMAGE SEARCH systems are
considered to be high end price range products and are sold
to a limited community of consumers. When I meet with
customers it has been my experience that among this class of
consumers who are in the market for computer-assisted
document management systems, the trademark IMAGE SEARCH is
recognized as designating a computer-assisted document
management system originating with one source -
[applicant].”
In view of the foregoing, we find that applicant has
demonstrated that its mark IMAGE SEARCH has acquired
distinctiveness pursuant to Section 2(f) as indicating
computer-assisted document management and retrieval systems
originating from one source, namely, applicant.
Decision: The refusal to register is reversed.
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board