Ipswitch, Inc.

Trademark Trial and Appeal Board

Jul 27, 1999

No. 75116174 (T.T.A.B. Jul. 27, 1999)

Paper No. 8
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT JULY 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ipswitch, Inc.
________
Serial No. 75/116,174
_______
Donna M. Weinstein of Fish & Richardson for applicant.
Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Hanak, Quinn and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Ipswitch, Inc. to
register the designation IPSWITCH for “computer software
for use in the access and the transfer of information
across local, national, world-wide, and global computer
networks.”1

1 Application Serial No. 75/116,174, filed June 5, 1996, alleging
dates of first use of December 18, 1991.
Ser No. 75/116,174
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground
that applicant’s designation, when 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. An oral
hearing was not requested.
The sum of applicant’s position, as set forth in its
two-page appeal brief, that the refusal to register should
be reversed is as follows:
Applicant’s mark is not the
descriptive two-word term “IP switch”,
but rather the coined, unified term
IPSWITCH, which is an amalgam word play
based on IP switch and the
Massachusetts town of Ipswich where
applicant was founded (see enclosed
excerpt on Ipswich from Webster’s
Geographical Dictionary). Thus
applicant’s mark incorporates a clear
double entendre and so cannot be deemed
merely descriptive. [citations
omitted]
The excerpt shows that Ipswich is a town located in
Massachusetts, with a population of 8,544.
The Examining Attorney states that “IP switch” is a
commonly used and readily understood term meaning “Internet
protocol switch” which, according to the Examining
Attorney, is “a technology that combines Internet protocol
Ser No. 75/116,174
3
switching and the routing of information to allow for high
speed network access.” The Examining Attorney maintains
that the term “IP switch” is merely descriptive of
applicant’s computer software, and that this
descriptiveness is not lost when the words are telescoped
to form a unitary designation. The Examining Attorney
contends that the relevant consuming public is not likely
to recognize the purported double entendre suggested by
applicant. In support of the refusal, the Examining
Attorney relies on a representative sample of excerpts
retrieved from the NEXIS database showing several hundreds
of hits for the term “IP switch.” A few examples show the
following:
Ipsilon Networks, Inc. is the premier
provider of high performance IP
switches, designed to accelerate
today’s IP networks to 21st-century
throughput.
Business Wire, August 25, 1997
While adding voice support to IP
switches and routers will add about a
10 percent-per-port premium to the cost
of the devices...
PC Week, August 11, 1997
Frame Relay Technologies, Inc. (FRT)
has introduced a new line of IP
switches that promise faster throughput
and cost one-tenth of the company’s
previous generation switches.
Network World, August 4, 1997
Ser No. 75/116,174
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If you answered yes to either question,
you are a good candidate to start
shopping for an IP switch...To get a
handle on how IP switches work, you
need a clear understanding of a
switch’s very function...Not all IP-
switching products work the same
way...The biggest complaints about IP
switching technologies are a rigid
requirement for specific hardware or
lack of support for protocols other
than IP.
Computer Shopper, July 1997
The IP switch provides more network
flexibility, security and service
options than some corporate networks.
CommunicationsWeek, July 7, 1997
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
idea about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
Ser No. 75/116,174
5
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The evidence of record leaves no doubt, and applicant
essentially does not dispute, that the term “IP switch”
(two-word term) is, at the very least, merely descriptive
of applicant’s goods. Although “IP switch” clearly is
merely descriptive when applied to computer software used
in Internet protocol switching, the crux of applicant’s
argument is that the unitary term IPSWITCH is not.
We find that the mere telescoping of “IP switch” to
form the designation IPSWITCH does not result in an
inherently distinctive mark. In considering the evidence
of record we recognize that there is no use of “IPswitch”
as one word. Nonetheless, the clear and, in fact, the only
connotation of the applied-for designation is “IP SWITCH.”
Whether shown as two typed terms or one telescoped typed
term, both versions would be pronounced the same and viewed
as having the same connotation. There is nothing unique or
incongruous about the telescoping of “IP switch” into the
one-word designation IPSWITCH. The mere deletion of a
space between the typed terms “IP” and “switch” is not
enough to turn a merely descriptive designation into a
registrable mark. See, e.g., Cummins Engine Co., Inc. v.
Continental Motor Corp., 359 F.2d 892, 149 USPQ 559 (CCPA
Ser No. 75/116,174
6
1966); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987); and In re Wickerware, Inc., 227 USPQ
970 (TTAB 1985).
As should be obvious from our above discussion, we
certainly are not persuaded by applicant’s double entendre
argument. Given the facts that Ipswich is a relatively
small town, that applicant currently has no connection with
the town,2 and that the designation sought to be registered
is spelled differently from the town, it is unreasonable to
think that purchasers would perceive the double entendre
suggested by applicant. Rather, our view is that this
double meaning, to the extent there is any at all,
undoubtedly would be lost on most, if not all purchasers.
The commonly understood meaning of “IP switch” simply
overwhelms the other meaning suggested by applicant.

2 Although applicant states that it was founded in Ipswich, the
record is silent as to the likelihood that purchasers would ever
be aware of that fact. In the words of the Examining Attorney,
“[w]hile the town of Ipswich may have meaning to the applicant,
it is unlikely that it will have any meaning to the relevant
consumers of the goods.”
Ser No. 75/116,174
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Decision: The refusal to register is affirmed.
E. W. Hanak
T. J. Quinn
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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