Equinix, Inc.

Trademark Trial and Appeal BoardJun 5, 2012

No. 85123800 (T.T.A.B. Jun. 5, 2012)

Mailed: June 5, 2012 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Equinix, Inc. ________ Serial No. 85123800 _______ Julia Spoor Gard of Barnes & Thornburg LLP for Equinix, Inc. Robert Clark, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _______ Before Bucher, Mermelstein and Lykos, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Equinix, Inc. seeks registration on the Principal Register of the mark PLATFORM EQUINIX (in standard character format) for services recited in the application, as amended, as follows: providing co-location services for computer hardware, software, voice, video and data communications applications; electronic data transmissions; peering services, namely, telecommunications services to allow the exchange of traffic between the users of various networks; computer network access services by means of an Ethernet in International Class 38; and computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; computer services, namely, remote management of computer applications for others; computer project management service; and consultation for the aforementioned services in Int. Class 42.1 1 Application Serial No. 85123800 was filed on September 7, 2010, based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85123800 - 2 - The Trademark Examining Attorney refused registration under Section 6(a) of the Lanham Act because the applicant has failed to disclaim the word “Platform” apart from the mark as shown. The Trademark Examining Attorney alleges that word is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register. According to Section 6(a) of the Trademark Act, “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Merely descriptive or generic terms are unregistrable under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is a ground for refusal of registration. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Box Solutions Corp., 79 USPQ2d 1953, 1954 (TTAB 2006). A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is Serial No. 85123800 - 3 - determined in relation to the products or services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows what the services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980). Even where individual terms are descriptive, combining them may evoke a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, without the combination of terms creating a unique Serial No. 85123800 - 4 - or incongruous meaning, then the resulting combination is also merely descriptive. In re Tower Tech., 64 USPQ2d at 1317-18. Applicant’s services include telecommunications services, providing facilities for the co-location of computer servers with the equipment of others, and project management of computer applications from a remote location. The Trademark Examining Attorney refers to dictionary definitions such as the following: platform: … 5.b. OPERATING SYSTEM; also: the computer architecture and equipment using a particular operating system.2 The examining attorney maintains that the term “Platform,” when used in connection with applicant’s recited services: … refers to a computer operating system that provides an interconnection between users of various networks and enables the remote management of computer applications. It is applicant’s computer operating system, or platform that provides the basis for applicant’s electronic data transmission services. The platform is also responsible for applicant’s ability to provide access to computer networks and permits remote management. As to the descriptiveness of the word “Platform” alone, applicant seems to agree with the Trademark Examining 2 http://www.merriam-webster.com/dictionary/platform, as accessed by the Trademark Examining Attorney on December 17, 2010. Serial No. 85123800 - 5 - Attorney’s basic contention that the word “Platform” is commonly used to describe a computer operating system, and that prospective purchasers of applicant’s services, most of whom do utilize computer operating systems, will readily understood this descriptive meaning in connection with the recited services. However, applicant argues that “Platform Equinix” is a unitary expression, with its “unique sound” lending to the mark “an alliterative lilting cadence,” and further, that: … [a]s used in Applicant’s mark, PLATFORM suggests that Applicant’s services allow the user to [use its services as a “platform” to] expand anywhere around the world because of the security, support, and additional prominence provided by Applicant’s co-location and project management services. Because of the dual meanings of the word “Platform” conveyed by applicant’s mark, applicant argues that its composite mark, PLATFORM EQUINIX, creates a “double entendre.” In support of this contention, applicant cites to cases such as In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983) [when mark LIGHT N’ LIVELY is used in connection with reduced calorie mayonnaise, no disclaimer of the word “Light” is required]. Applicant is correct in noting that the word “Platform” can reference an elevated place from which to launch or expand. However, as applied to telecommunication services, that is at best a minor variation on the more specific definition above, which applicant has acknowledged to be the Serial No. 85123800 - 6 - primary descriptive significance of the term when used in connection with computers. The connotations and commercial impressions of these uses is the same in either sense. Hence, we find applicant’s double entendre argument is not persuasive. And as to why we would conclude that “Platform Equinix” is a “unitary” term, we see no compelling reason. This term is clearly not “alliterative” and we find nothing “lilting” about it. Hence, we affirm the Trademark Examining Attorney’s requirement under Section 6(a) of the Lanham Act. Decision: The refusal to register in the absence of a disclaimer of the word “Platform” is affirmed. However, this decision will be set aside if, within thirty days of the mailing date of this order, applicant submits to the Board a proper disclaimer of the word “Platform.”3 See Trademark Rule 2.142(g). 3 An appropriate disclaimer will be worded as follows: “No claim is made to the exclusive right to use the word ‘Platform’ apart from the mark as shown.”