Micro-Strategy Inc.

Trademark Trial and Appeal Board

Aug 31, 2001

No. 75566128 (T.T.A.B. Aug. 31, 2001)

8/31/01 Paper No. 14
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MicroStrategy Incorporated
________

Serial No. 75/566,128
_______

Michael J. Bevilacqua and Barbara A. Barakat of Hale and
Dorr LLP for MicroStrategy Incorporated.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
MicroStrategy Incorporated has filed an application to
register on the Principal Register the mark DSS SUBSCRIBER
for goods identified, as amended, as “computer programs for
use in publishing and creating customized forms in a wide
variety of fields” in International Class 9.1
Registration has been refused under Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a), on the basis of

1 Application Serial No. 75/566,128, filed October 6, 1998, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/566128
2
applicant’s failure to comply with a requirement to
disclaim “DSS.” These letters, according to the Examining
Attorney, are the acronym for “decision support system,”
and are merely descriptive of applicant’s goods within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and therefore must be disclaimed.
When the refusal to register was made final, applicant
appealed to this Board.2 Both applicant and the Examining
Attorney have filed briefs. Applicant did not request an
oral hearing.
It is the Examining Attorney’s position that “DSS” is
the acronym for “decision support system,” which “describes
software which facilitates the organization of information
into a format usable for decision making” (brief, p. 3);
that the evidence shows applicant is a leading provider of
“DSS” software, and “applicant uses its mark [sic-DSS]? on
a variety of DSS computer software products” (brief, p. 4);
that the record “establishes a connection between applicant
and DSS software” (brief, p. 3); that in light of this
information, “it is difficult to suppose that DSS

2 In the first Office action, a different Examining Attorney
refused registration of the entire mark as merely descriptive
under Section 2(e)(1). However, in the second Office action,
that Examining Attorney withdrew the refusal of the mark as a
whole under Section 2(e)(1), but required a disclaimer of “DSS.”
Thus, the issue of the descriptiveness of the mark as a whole is
not before the Board.
Ser. No. 75/566128
3
SUBSCRIBER [software] has absolutely no DSS applications or
DSS-related functions” (brief, p. 4); and that other
meanings of the acronym “DSS” are not relevant in relation
to applicant’s goods. The Examining Attorney further
argues that “the customized forms generated by DSS
SUBSCRIBER [software] may well serve as an integral part of
applicant’s DSS platform.” (Brief, p. 6.) From this, the
Examining Attorney concludes that “DSS” is merely
descriptive of a significant attribute of the goods on
which applicant intends to use this mark because (i) the
goods “are used in connection with other DSS-related
products,” and/or (ii) this software which is for
publishing and creating customized forms “would assist in
organizing and presenting the data in a form usable for
decision-making” (brief, p. 5).
The record includes the following evidence submitted
in support of the Examining Attorney’s requirement for a
disclaimer of “DSS”:
(1) a one-page printout from
applicant’s website titled
“MicroStrategy DSS Suite Overview”
and listing seven programs, DSS
Broadcaster, DSS Web, DSS Agent,
DSS Executive, DSS Server, DSS
Administrator, and DSS Objects;

(2) one page from the Acronyms,
Initialisms & Abbreviations
Dictionary (22nd ed.) listing over
Ser. No. 75/566128
4
75 meanings for “DSS,” one of which
is “Decision Support System”;

(3) one page from the on-line “Acronym
Finder” stating that the “search
for dss returned 95 definitions,”
and listing several definitions,
one of which is “Decision Support
System”; and

(4) several excerpted stories retrieved
from the Nexis database to show
that “applicant’s goods feature
decision support systems used to
create documents” (Final Office
action, p. 1)3.

Applicant acknowledges that it sells decision support
software which may be used with decision support system
products.4 However, applicant contends that the goods
involved in this application (“computer programs for use in
publishing and creating customized forms in a wide variety
of fields”) are not decision support systems and are not
for decision making, but rather are computer software
programs for publishing and creating customized forms; and
that, therefore, “DSS” has no meaning in connection with
applicant’s involved goods. Applicant further contends

3 We note that the Examining Attorney’s searches of the Nexis
database system were structured to include both “DSS” and
“MicroStrategy.” Thus, the searches precluded locating any other
uses of the term “DSS” in relation to the identified goods or in
relation to computer programs generally.
4 The Board takes judicial notice of the following definition of
“DSS” from Webster’s New World Dictionary of Computer Terms
(Seventh Edition 1999): “Decision support system. A program
designed to help management analyze data to make decisions on
semi-structured problems.”
Ser. No. 75/566128
5
that given the many meanings of “DSS” in both the acronym
dictionary and the on-line acronym finder submitted by the
Examining Attorney, “DSS” would not describe to potential
purchasers the function or characteristics of applicant’s
involved goods; and applicant notes that the page from its
website does not include any reference to the program
involved in this application.5
Because we are dealing in this case with the Examining
Attorney’s requirement for a disclaimer of three letters as
an acronym, we start with the guidance of the predecessor
of our primary reviewing Court from the case of Modern
Optics, Incorporated v. The Univis Lens Company, 234 F.2d
504, 110 USPQ 293, 295 (CCPA 1956):
While each case must be decided on the
basis of the particular facts involved,
it would seem that, as a general rule,
initials cannot be considered
descriptive unless they have become so
generally understood as representing
descriptive words as to be accepted as
substantially synonymous therewith.

5 In its brief on appeal (p. 4), applicant, for the first time,
referred to attached copies of numerous third-party registrations
including “DSS” in the marks, of which only two include
disclaimers of the letters “DSS.” First, there were no
attachments with applicant’s brief. Second, even if the
photocopies of third-party registrations had been attached to the
brief, they would be untimely filed under Trademark Rule
2.142(d), and the Examining Attorney properly objected thereto
(brief, p. 6). We have not considered applicant’s unsupported
argument regarding third-party registrations which applicant
asserts do not include disclaimers of the letters “DSS.”
Ser. No. 75/566128
6
See also, Avtex Fibers Inc. v. Gentex Corporation, 223 USPQ
625 (TTAB 1984), and cases cited therein.
In order to determine whether matter is merely
descriptive, it is well settled that “a term is descriptive
if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods [or
services].” In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). In addition, the
determination of mere descriptiveness must, of course, be
made not in the abstract, but in relation to the goods or
services for which registration is sought, and the impact
that it is likely to make on the average purchaser of such
goods or services. See In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991).
Both acronym reference sources clearly list many
different meanings of “DSS,” including, “decision support
structure,” “decisions support solutions,” “data systems
services,” “data server system,” “deep space station,” and
“department of social services.” However, the page from
applicant’s website, as well as the stories regarding
applicant retrieved from the Nexis database, all clearly
indicate that these initials in relationship to applicant,
MicroStrategy Incorporated, are intended to refer to
“decision support system.” The record is clear that
Ser. No. 75/566128
7
applicant uses the letters “DSS” in combination with other
words for several different computer programs, a fact
acknowledged by applicant.
The problem we have here is that we are otherwise left
to speculation and conjecture because there is no evidence
of record which establishes descriptive use of the acronym
“DSS” in relationship to the specific goods which are the
subject of this application; nor is there evidence which
establishes that “DSS” is an abbreviation generally used
and recognized by the consuming public when used for the
identified goods. See In re American Standard Inc., 223
USPQ 353 (TTAB 1984); and In re Harco Corporation, 220 USPQ
1075 (TTAB 1984). Cf. In re The Yacht Exchange, Inc., 214
USPQ 406 (TTAB 1982).
Decision: The requirement under Section 6 for a
disclaimer of the letters “DSS” is reversed.

*****

Bucher, Administrative Trademark Judge, concurring:
The mark applicant has selected is DSS SUBSCRIBER.
The goods on which it is to be applied are “computer
programs for use in publishing and creating customized
Ser. No. 75/566128
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forms in a wide variety of fields.” The Trademark
Examining Attorney postulated that the goods identified in
this Intent-to-Use application might well be connected in
some way to applicant’s database management software.
Evidently, the Trademark Examining Attorney was unable to
prove the same in this record, and did not take advantage
of her prerogative under Trademark Rule 2.61(b) to request
additional information from applicant.
The Trademark Examining Attorney initially assigned to
this application struggled to prove that the entire mark
was merely descriptive of these goods. Then the current
Trademark Examining Attorney went final when applicant
refused to comply with her requirement that applicant
simply disclaim the term “DSS” apart from the mark as
shown. Instead, applicant argues that “… the term DSS has
no meaning in connection with appellant’s goods.”
(Applicant’s appeal brief, p. 4).
From the contents of this file, we see the press
reports that applicant is “… a leading worldwide provider
of mission critical decision support systems.”6 Like the
Trademark Examining Attorney herein, I too was of the

6 And unlike my colleagues, I am quite comfortable once again
in concluding that whenever this applicant uses the initialism
“DSS,” the relevant public understands it to be “substantially
synonymous” with the highly descriptive term, “Decision Support
System.” See Modern Optics, Inc., supra.
Ser. No. 75/566128
9
impression that applicant is a vendor of information
technologies, whose software permits its business customers
to extract business intelligence, like water, from
terabyte-sized swamps of undifferentiated data. As
applicant’s software has matured over the years (e.g., DSS
Agent, DSS Executive, DSS Broadcaster, or MicroStrategy 7
Business Intelligence Platform), the on-going focus for
Michael J. Saylor and company has been making it possible
for thousands of users in hundreds of enterprises more
easily and quickly to access/query large volumes of data.
Presumably, individuals having a good DSS engine equipped
with unlimited DSS customization capabilities can be most
proactive in finding and integrating key business
information.
Of course, this panel earlier decided the case of the
descriptiveness of the alleged mark, DSS BROADCASTER. In
the face of a thin record offering inadequate proof of
descriptiveness in that case, the majority bent under the
weight of applicant’s equally adamant arguments therein
that the involved goods did not amount to a “Decision
Support System.” Yet in that case, the identification of
goods were more clearly a DSS -- computer software for on-
line analytical processing [OLAP] and data analysis,
namely, processing and analyzing data for the purpose of
Ser. No. 75/566128
10
delivering customized and personalized information to
targeted recipients.”
It is true, of course, that in the instant
application, we have no OLAP or other direct reference to a
decision support system. Following the introductory
wording about “computer programs” comes a cryptic reference
to “publishing and creating customized forms.”
Precisely, what are these goods in International Class
9, or what is their objective? The underlying goods are
computer programs, or software. Applicant’s software will
be used to create “forms.” In this context (i.e., when
dealing with data bases), the word forms is a term of art.
This is clearly not a reference to printed forms, but
rather suggests a predefined grouping of functions, called
from a menu and displayed, if necessary, on several
windows. Forms have blocks, regions and fields as their
components.
Customizable forms are generally forms that the
vendor, one’s system administrator, or even the non-
technical user, can modify for ease of use. In such a
software module, the form-customization window lists
available forms and their methods of customization. In
addition to customizing database forms, such a module may
Ser. No. 75/566128
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even allow DSS users to customize reports and inquiries for
almost any business application.7
Furthermore, consistent with this interpretation,
looking back to the identification of goods in the DSS
BROADCASTER application, we see language of “…delivering
customized and personalized information to targeted
recipients.” Hence, I admit that I share the suspicions of
the Trademark Examining Attorney that the goods herein
would consist of a software module permitting the content
of forms, if not reports and other queries, to be
personalized to the needs of applicant’s customers’
individual subscribers.
In fact, from applicant’s own Web page, under a tab
for MicroStrategy 7 Business Intelligence Platform, under
“query and reporting,” we learn that “users can subscribe
to frequently used reports,” and from “Web-based
reporting,” that “navigation bars quickly allow prompting,
subscription and drill capabilities …”

7 In addition to the identifications of goods contained in a
listing of federal trademark registrations owned by Microsoft,
Sybase, Lotus, Oracle, and others, note in particular the clearer
identification of similar business intelligence software of Reg.
No. 2,388,279 for the mark SQLBASE EXCHANGE (owned by Centura
Software / Gupta Technologies): “computer software used for data
storage and reporting, which allows users to customize database
forms, reports and inquiries for any business application …”

Ser. No. 75/566128
12
Nonetheless, because we are not permitted to engage in
speculation beyond the four corners of the current record,
I concur with the majority opinion that given applicant’s
adamant arguments to the contrary, we must reverse the
Office’s position herein. However, with a different
record, we should have been able to affirm the Trademark
Examining Attorney.