EA Systems Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 75131147 (T.T.A.B. Aug. 6, 1999)

Paper No. 9
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re EA Systems Inc.
___________
Serial No. 75/131,147
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Andrew P. Bridges, Joshua D. Thomas and Diane E. Turriff of
Wilson, Sonsini, Goodrich & Rosati for applicant.
Glenn G. Clark, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
____________
Before Cissel, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
EA Systems Inc. has filed a trademark application to
register the mark PLANTBROWSER for “computer software, and
manuals sold as a unit, for computer aided design, the
design or engineering of industrial or manufacturing
Serial No. 75/131,147
2
facilities, or data extraction, querying, searching or
analysis.”1
The Trademark Examining Attorney has finally refused
registration, 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 its goods.
Applicant has appealed. Both the applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Citing dictionary definitions of the individual terms,
PLANT and BROWSER, and referring to information about
applicant’s product obtained from an excerpt of an article
from the LEXIS/NEXIS database and from applicant’s own
promotional material, the Examining Attorney contends that
the individual terms PLANT and BROWSER are merely
descriptive of the nature and function of the software
identified in the application. The Examining Attorney
contends, further, that the combination of these two terms
into a single word in the applied-for mark does not alter
the descriptive connotation or meaning of the individual
words in connection with the identified goods. In support
of his position, the Examining Attorney submitted

1 Serial No. 75/131,147, in International Class 9, filed July 8, 1996,
based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 75/131,147
3
definitions of PLANT and, from computer dictionaries, of
BROWSER. He also submitted, with his brief, definitions of
BROWSER from recent standard, non-computer dictionaries,
and we take judicial notice of these definitions.
Additionally, the Examining Attorney submitted copies of
excerpts of articles from the LEXIS/NEXIS database in
support of his position.2
Applicant contends that PLANTBROWSER is suggestive;
that both of the individual terms, PLANT and BROWSER, have
numerous different meanings; that the most common noun
meaning of PLANT is vegetation; that most general
dictionaries do not include computer-related meanings for
BROWSER; and, further, that in the computer field there is
no uniform definition of BROWSER. Applicant concludes
that, because its mark is capable of multiple meanings,
consumers must “exercise a significant degree of
imagination to comprehend the nature of applicant’s goods.”
In support of its position, applicant listed, in its
responses to the Examining Attorney, a number of third-

2 A number of the excerpts are relevant to, and probative of, the issues
before us. However, we note that a number of the excerpts are
irrelevant (e.g., references to “plants” in the context of
horticulture, and to mastodons that are “browsers”). Further, a number
of the articles are from newswire services and are, therefore, of
little probative value. Finally, even the relevant excerpts are
somewhat limited in value by the fact that the excerpts are extremely
short. In particular, there is so little text from the article
referring to applicant that it is difficult to draw conclusions from
this excerpt.
Serial No. 75/131,147
4
party registrations and applications for marks that include
either the term PLANT or BROWSER, allegedly for computer
related products.3
Applicant argues that the lack of evidence of
competitors’ uses of the terms PLANT and BROWSER in
combination to describe products in the same field as
applicant’s products “confirms the fact” that the mark is
only suggestive in relation to the identified goods and,
further, that registration of applicant’s mark will not
deprive competitors of the ability to effectively
communicate the nature of their products to customers. In
support of its position, applicant submitted a standard
dictionary definition of BROWSER, a copy of an article
about applicant’s products in a professional newsletter,
and a copy of applicant’s promotional literature.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,

3 Although applicant did not properly make these registrations of record
in this case by submitting copies of the registrations from the records
of the Patent and Trademark Office, the Examining Attorney did not
object to these registrations on this ground. Therefore, we consider
this list to be of record. However, having said this, we find this
list to be of extremely limited probative value, as we have no
information regarding whether the registrations include any disclaimed
matter or Section 2(f) claims, whether the marks are on the Principal
or Supplemental Registers, and the exact nature of the identified
goods. Further, they are of limited value, as each case must be
decided on the particular facts therein.
Serial No. 75/131,147
5
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the Examining Attorney and find that the
evidence supports the conclusion that the individual words,
PLANT and BROWSER, and the combination thereof,
PLANTBROWSER, are merely descriptive in connection with the
identified goods. PLANT obviously has a number of
definitions listed in the Webster’s Ninth New Collegiate
Dictionary of record, including the following: “a the
land, buildings, machinery, apparatus, and fixtures

Serial No. 75/131,147
6
employed in carrying on a trade or an industrial business,
b a factory or workshop for the manufacture of a particular
product, c the total facilities available for production or
service.” BROWSER is defined as “a program that lets you
look through data”4 and “a client program used to view Web
documents.”5 The excerpts of articles from the LEXIS/NEXIS
database demonstrate the use of these two terms as defined
herein in various articles. Further, applicant has
submitted literature about its product, including its own
promotional brochure, describing its company as providing
“software and services for designing and engineering
complex industrial process and power plants, and managing
information over the operating life of plant facilities”6;
and describing its PLANTBROWSER product as software that
“integrates into the Microsoft Internet Server and provides
access to PASCE databases for Internet/intranet-enabled
plant engineering in real-time for multiusers”7 and
“enable[s] PASCE application access via Intranet/Internet

4 The Computer Desktop Encyclopedia (undated). The better practice is
for the Examining Attorney to include in his submissions of copies of
publications, the page indicating the date of publication. In the
present case we find these dictionary definitions probative. They
support the obvious connotation of the term as it appears in the
LEXIS/NEXIS excerpts.
5 The Internet Dictionary (undated).
6 A-E-C Automation Newsletter (June 1997).
7 Id.
Serial No. 75/131,147
7
standards … utilizes Web-based techniques for 3D model
visualization, regardless of viewing platform.”8 There is
no question that PLANT and BROWSER merely describe
significant features of the goods as identified. Clearly,
the combination of the words “PLANT” and “BROWSER” into the
term “PLANTBROWSER” has a meaning that ordinary usage would
ascribe to those words in combination. In other words,
PLANTBROWSER merely describes the fact that applicant’s
identified product allows the user to search, extract,
query or analyze data pertaining to design and management
of plant facilities. 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., 834 F.2d
1017, 5 USPQ2d 1110, 1112 (Fed Cir. 1987) and In re Orleans
Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
Applicant’s arguments to the contrary are not well
taken. It is irrelevant that PLANT and BROWSER may have
multiple meanings because, as we have already stated, we
must consider the mark in connection with the identified
goods. Further, the fact that applicant will or intends to
be the first entity to use the term PLANTBROWSER in
connection with its goods is not dispositive where, as

8 Applicant’s brochure regarding its “Plant Design and Lifecycle Data
Management” products.
Serial No. 75/131,147
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here, such term unequivocally projects a merely descriptive
connotation. See, In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973).
In the present case, it is our view that, when applied
to applicant’s goods, the term PLANTBROWSER immediately
describes, without conjecture or speculation, the nature
and function of applicant’s goods. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for purchasers of
and prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
PLANTBROWSER as it pertains to applicant’s computer
software and manuals.
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
R. F. Cissel
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,

Serial No. 75/131,147
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Trademark Trial and Appeal Board