CIBER, Inc.

Trademark Trial and Appeal Board

Nov 1, 1999

No. 74643553 (T.T.A.B. Nov. 1, 1999)

Paper No. 19
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 11/1/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re CIBER, Inc.
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Serial No. 74/643,553
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Christopher M. Brock and George T. Schooff
of Harness, Dickey & Pierce, P.L.C. for CIBER, Inc.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
CIBER, Inc. has filed an application to register the
mark CIBRCASE for “computer software development and
support services for manufacturing and service companies
namely, development of customized application software and
programming, loading, and updating software.”1

1 Serial No. 74/643,553, filed March 8, 1995, based on an
allegation of a bona fide intention to use the mark in commerce.
The statement of use filed July 22, 1996 sets forth first use
dates of August 1995.
Ser No. 74/643,553
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After the initial examination of this intent-to-use
application was completed, the mark was published for
opposition on November 28, 1995. No opposition having been
filed, a notice of allowance was issued on February 20,
1996. Applicant filed its statement of use on July 22,
1996. In the subsequent examination the Examining Attorney
refused to accept the specimens of use submitted by the
applicant on the ground that the specimens failed to show
use of the mark sought to be registered, CIBRCASE, in
connection with the services identified in the application.
The requirement for acceptable specimens was made final and
this appeal followed. Applicant and the Examining Attorney
have filed briefs but no oral hearing was requested.
The Examining Attorney has set forth the issue on
appeal as whether the specimens of record demonstrate use
of the mark CIBRCASE in connection with the computer
software development services identified in the
application. We believe the issue may equally well be
stated as whether the designation CIBRCASE, as used on the
specimens of record, functions as a service mark for the
identified services.
To be registrable as a service mark, there must be a
direct association between the mark and the services named
in the application. In re Universal Oil Products Co., 476
Ser No. 74/643,553
3
F.2d 653, 177 USPQ 456 (CCPA 1973). The Examining Attorney
has taken the position that applicant uses the designation
CIBRCASE in its advertisements, which have been submitted
as specimens, to identify a software tool used in the
performance by applicant of its services and not as a mark
for the services per se.
As noted by the Examining Attorney, in the specimens
applicant describes the performance of its “outsourcing
projects” by means of the “processes, methods and tools
prescribed in CIBRScope.” CIBRScope, in turn, is said to
include CIBRMethods and CIBRWorks (“a suite of design,
construction and re-engineering tools”). The tools of
CIBRWorks are listed as:
CIBRCase – an integrated CASE tool
CIBRView – a code analysis tool, and
CIBRTools – an evolving set of construction tools.
In a second specimen the CIBRCase tool is identified in
terms of the particular software program which is used.
In order to clarify the recognized meanings of the
terms CASE and “tool” in the trade, the previous Examining
Attorney made of record the definition of CASE as an
acronym for “computer aided software engineering” and of
“CASE tools” as tools which “provide automated methods for
Ser No. 74/643,553
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designing and documenting software programming.”2 The
present Examining Attorney attached to her brief the
definition of “tool” alone as “a program used for software
development or system maintenance.”3 Thus, the Examining
Attorney argues that CIBRCASE in the specimens of record
refers only to the software being used by applicant in the
process of developing customized software for others. She
likens the present circumstances to those in In re Walker
Research, Inc., 228 USPQ 691 (TTAB 1986), in which the
Board found that the mark SegMentor, as used in the
advertising sheets submitted as specimens, only identified
software used in the performance of the applicant’s market
segment analysis services and not the services themselves.
Applicant argues that the specimens of record
unequivocally show use of CIBRCASE in the advertising of
its recited services, and that this is all that is required
to support registration of CIBRCASE as a service mark.
Applicant contends that the prospective purchasers for its
computer software development and support services are
aware that applicant does not sell goods, such as software,

2 H. Newton, Newton’s Telecom Dictionary 196 (8th ed. 1994).
3 A. Freedman, The Computer Glossary 428 (8th ed. 1998). In view
of the fact that the Board may take judicial notice of dictionary
definitions, we have considered this definition even though only
introduced by the Examining Attorney with her brief. See Marcal
Paper Mills, Inc. v. American Can Co., 212 USPQ 852 (TTAB 1981).
Ser No. 74/643,553
5
and would view applicant’s use of the mark CIBRCASE in its
specimens as being used in association with its services.
As we stated in Walker Research, “whether or not a
term functions as a service mark necessarily depends on how
that term is used and how it is perceived by potential
recipients of the services.” Here, as in the Walker case,
we must base our determination of public perception of
applicant’s mark on the manner of use of CIBRCASE in the
advertising which has been submitted as specimens.
In doing so, we find applicant’s usage in the text of
its advertising parallels the manner of use found in the
Walker case. In both instances, the designation sought to
be registered as a service mark is used to describe a
“tool” which is utilized to perform the service being
offered to the prospective purchasers. Although applicant
here, similar to the applicant in the Walker case, does not
sell the software so designated, and accordingly may not
intend to use the designation in a trademark sense with the
software, as we pointed out in Walker, this does not
warrant finding that the designation must therefore
function as a service mark for the services as a whole.
The mark CIBRCASE, as used in the specimens of record,
refers only to the software used by applicant in the
Ser No. 74/643,553
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performance of its software development and support
services, and does not identify the services themselves.
While applicant argues that prospective purchasers for
its particular services would be aware that applicant does
not sell software and thus would not perceive CIBRCASE as
other than a mark being used to identify the services, the
present specimens provide no support for this contention.
CIBRCASE is used solely to identify a specific “tool” used
by applicant in performing the service, in the same manner
that CIBRVIEW and CIBRTOOLS identify other tools. The
evidence of record shows that the term “tool” is widely
used in the computer industry to refer to a computer
program or software. Thus, we see no reason to view
CIBRCASE, as well as the other two designations, as other
than applicant’s internal names for the software “tools” it
uses in performing its services.
Despite applicant’s arguments to the contrary, this is
not a situation comparable to that in In re Holiday Inns,
Inc., 223 USPQ 149 (TTAB 1984). There the manner of use of
the designation KING LEISURE was found to be likely to be
perceived by the relevant public as referring to a type of
lodging offered by the applicant, rather than any specific
goods or physical items. Accordingly, KING LEISURE
functioned as a service mark. Here the specimens provide
Ser No. 74/643,553
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no basis for CIBRCASE to be viewed as a type or variation
of the basic services offered by applicant; CIBRCASE refers
only to specific goods used by applicant in performing
these services. Furthermore, although applicant attempts
to distinguish the present circumstances from the Walker
case by arguing that CASE connotes the provision of
software development services, while SegMentor has no such
connotation, we cannot accept this distinction. The mark
at issue is not CASE, but rather CIBRCASE, which applicant
describes as “an integrated CASE tool.” The reference in
the designation is to a program which implements this CASE
or computer aided software engineering, not to the
engineering per se.
Accordingly, we find that the designation CIBRCASE, as
used on the specimens of record, does not function as a
service mark.
Ser No. 74/643,553
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Decision: The refusal of registration on the basis
that the specimens of record are not acceptable in that
they fail to show use of CIBRCASE as a mark for the
services identified in the application is affirmed.
E. W. Hanak
G. D. Hohein
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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