Hitachi Software Engineering Co., Ltd.

Trademark Trial and Appeal Board

Apr 30, 2002

No. 78007276 (T.T.A.B. Apr. 30, 2002)

Hearing: Paper No. 18
March 6, 2002 TJQ
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hitachi Software Engineering Co., Ltd.
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Serial No. 78/007,276
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Edward M. Prince of Alston & Bird for applicant.
Michael Ryan Tanner, Trademark Examining Attorney, Law
Office 102 (Thomas Shaw, Managing Attorney).
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Before Quinn, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Hitachi Software
Engineering Co., Ltd. to register the mark SHAREWIZARD for
“computer application software used by business for
telephone conference and network conference connections.”1
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, as
1 Application Serial No. 78/007,276, filed May 8, 2000, alleging
a bona fide intention to use the mark in commerce. Applicant
subsequently submitted, on August 3, 2001, an amendment to allege
use setting forth a date of first use anywhere and a date of
first use in commerce of October 2000.
Ser No. 78/007,276
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applied to applicant’s goods, is merely descriptive of
them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs, and
applicant’s counsel and the Examining Attorney appeared at
an oral hearing before the Board.
At the outset, it should be noted that applicant has
filed an alternative amendment to seek registration on the
Supplemental Register. See: TMEP § 1212.02(c); and TBMP §
1215. Applicant, in the papers filed August 3, 2001,
requested that the application be amended to one seeking a
Supplemental Register registration in the event the Board
found the mark to be merely descriptive. In response, the
Examining Attorney indicated that the alternative amendment
was acceptable.
Applicant explains that its product is “collaborative
software which allows one to connect its members at far
cites.” Users “can have voice communication while making
annotation on shared data” and “[w]ith a simple click on a
specially designed pen, the annotations made on one screen
will be projected on screens at remote sites as if by magic
while simultaneously permitting voice conferencing.”
(emphasis in original). According to applicant, “as if by
magic or through wizardry, the annotations made at remote
Ser No. 78/007,276
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locations are projected on a teleconferencing computer
screen and combined with voice inputs.” (brief, pp. 5-6).
Applicant argues that its mark is a nonsensical, suggestive
term and that others in the trade do not have a competitive
need to use the term in connection with their similar
products. Applicant urges that any doubt with respect to
mere descriptiveness must be resolved in its favor. In
support of its arguments, applicant submitted literature
regarding its product, and several third-party
registrations showing, according to applicant, that similar
marks in the technology field were found to be not merely
descriptive. Applicant contends that the registrations
establish a consistency in Office practice which is not
followed in this case.
The Examining Attorney maintains that the mark
describes “a desired feature or function of the applicant’s
software and the means by which the desired function is
implemented, namely, a utility interface--or ‘wizard’--that
helps the user employ or use the desired function of the
software application--namely, voice and data sharing over a
telecommunications network with no limit as to the number
of connections.” (brief, p. 5). In essence, according to
the examining attorney, “the purpose of applicant’s easy-
to-use interface utility is to make data and document
Ser No. 78/007,276
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sharing possible during conference calls.” (brief, p. 7).
With respect to the third-party registrations, the
Examining Attorney states that they are not conclusive on
the descriptiveness issue in the present case. In support
of the refusal, the Examining Attorney submitted dictionary
definitions of the words “share” and “wizard,” and excerpts
of articles retrieved from the NEXIS database showing uses
of “share” and “wizard” in the same article.
It is well settled that a term is considered to be
merely descriptive of goods, 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. 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
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Ser No. 78/007,276
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The word “share” is defined as “to participate in,
use, enjoy, or experience jointly with another or others.”
Dictionary.com The word “wizard,” as defined by Webopedia,
means as follows: “A utility within an application that
helps you use the application to perform a particular task.
For example, a ‘letter wizard’ within a word processing
application would lead you through the steps of producing
different types of correspondence.”
Applicant’s product literature shows that its software
is used to share data and, thus, the term “share” describes
a function or feature of the software. We also find that a
feature of applicant’s software is encompassed within the
broad definition of the term “wizard” as set forth above.
The NEXIS articles appear to use the term “wizard” in a
broad sense, as for example: “Windows ME has new software
wizards that help the user set up home networks” (Dayton
Daily News, July 9, 2000); “the new operating system has a
‘wizard’ that makes [networking] easier” (Los Angeles
Times, July 3, 2000); and “a ‘wizard,’ or small program,
surveys the major pieces of hardware and software on your
machines” (The Washington Post, August 21, 1995).
Applicant’s literature indicates that applicant’s
product is “data sharing software” which “allow[s] you to
share your PC data with others, then make an annotation on
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sharing data interactively” through use of “ShareWizard
Pen” and “ShareWizard Talk.” The literature describes the
SHAREWIZARD feature as an “easy to use” and “simple”
interface.
Accordingly, we conclude that the term SHAREWIZARD
immediately describes, without conjecture or speculation, a
significant feature of the goods, namely, the utility
within applicant’s software application that helps the user
share data (e.g. annotations) and voice communications with
others.
The third-party registrations have been carefully
considered, but this evidence does not compel a different
result. Applicant and the Examining Attorney have argued
at some length about the practice of the Office relative to
the registrability of marks having either of the words
“share” or “wizard” as a portion thereof. Suffice it to
say, this evidence is of little moment in deciding the
present appeal. While uniform treatment under the
Trademark Act is an administrative goal, our task in this
appeal is to determine, based on the record before us,
whether applicant’s particular mark is merely descriptive.
As often noted, each case must be decided on its own
merits. We are not privy to the records in the cited
registrations and, moreover, the determination of
Ser No. 78/007,276
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registrability of a particular mark by the Office cannot
control the result in the case now before us. See: In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) [“Even if some prior registrations had
some characteristics similar to [applicant’s application],
the PTO’s allowance of such prior registrations does not
bind the Board or this court.”].
Decision: The Section 2(e)(1) refusal to register on
the Principal Register is affirmed. Inasmuch as the
Examining Attorney has accepted the alternative amendment
to the Supplemental Register, the application file will be
forwarded in due course to the Examining Attorney for
appropriate action.2
2 As indicated by the Examining Attorney in the Office action
dated October 17, 2001, the application will be given a new
filing date of August 3, 2001 (see Trademark Rule 2.75(b) and
TMEP § 1115.02) and the Examining Attorney will conduct a new
search of Office records for any confusingly similar marks under
Section 2(d).