Micro-Strategy Inc.

Trademark Trial and Appeal Board

Jul 16, 2002

No. 75666992 (T.T.A.B. Jul. 16, 2002)

Mailed: July 16, 2002
Paper No. 12
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re MicroStrategy Incorporated
___________
Serial Nos. 75/666,992 and 75/666,993
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Michael J. Bevilacqua and Barbara A. Barakat of Hale and
Dorr for MicroStrategy Incorporated.
Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
____________
Before Hohein, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
MicroStrategy Incorporated has filed two applications
to register on the Principal Register the mark THE
INTELLIGENCE COMPANY for “computer programs for use in
online analytical processing and data analysis”1 in the
first application, and, in the second application, for

1 Serial No. 75/666,992, in International Class 9, filed March 24, 1999,
based on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/666,992 & 75/666,993
2
“computer education training services” and “computer
services, namely, providing computer consulting services,
computer support services, namely troubleshooting of
computer hardware and software problems via telephone and
email, computer software design for others.”2
The trademark examining attorney has issued a final
refusal to register in each case, 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 if used in connection
with its goods and services.3
Applicant has appealed in each case. Both applicant
and the examining attorney have filed briefs, but oral
hearings were not requested. Because the issues and facts
are substantially the same in these two applications, we
have considered the appeals together and issue, herein, this
single decision.

2 Serial No. 75/666,993, in, respectively, International Classes 41 and
42, filed March 24, 1999, based on an allegation of a bona fide
intention to use the mark in commerce.
3 In the office actions of July 3, 2000, the examining attorney noted
applicant’s entry of a disclaimer; stated “the disclaimer requirement
[is] withdrawn”; and stated a Section 2(e)(1) refusal. In its
responses, applicant stated that it “assumes the previously entered
disclaimer [of COMPANY] has been removed.” The examining attorney did
not respond to this statement and the disclaimers remain of record in
the two applications.
The final refusal to register in each application included a
ground of likelihood of confusion. Applicant, in its brief, notified
the examining attorney that the cited registration had been cancelled.
In her brief in each application, the examining attorney withdrew that
ground of refusal.
Serial No. 75/666,992 & 75/666,993
3
The examining attorney contends that THE INTELLIGENCE
COMPANY merely describes “a company that is the source of
goods with computer processing capabilities” and services
using such goods; that the term “intelligence” is used in
the computer industry to describe a function or feature of
computer programs; that, in the context of applicant’s
computer software, “intelligence” describes the processing
and data analysis capabilities of the software; and that, in
the context of applicant’s services, “intelligence”
describes “a field in which computer education, support,
consulting and software design services are offered.”
In support of her position, the examining attorney
submitted dictionary definitions of “intelligence”; excerpts
of articles from the LEXIS/NEXIS database; and copies of
third-party registrations for marks that include the
disclaimed term “intelligence” for computer software and
related products and services.
Except for four excerpts referring, respectively, to
“artificial intelligence software,” “intelligence software
at Idefense” (pertaining to computer viruses), “intelligence
software,” and “e-customer intelligence software and
consulting services,” the remaining LEXIS/NEXIS article
excerpts submitted use the term “business intelligence” or
“business-intelligence” to refer to software of the type
Serial No. 75/666,992 & 75/666,993
4
identified in application serial no. 75/666,992. The
following are two examples:
Informix joins a growing list of business-
intelligence software vendors selling prepackaged
data-analysis software to specific vertical
markets. [TechWeb News, June 14, 2000.]
You don’t need to be a statistician at the Census
Department or a researcher at the Centers for
Disease Control and Prevention to need statistical
or data analysis software. Once used primarily
for scientific research, the functions offered in
these packages have now permeated the business and
government arenas, providing what is called
business intelligence. [Government Computer News,
June 1, 2000.]
Applicant contends that THE INTELLIGENCE COMPANY,
considered as a whole, is not merely descriptive because it
does not “enable potential purchasers to immediately
understand the precise nature of the goods which it
identifies”; that “[e]ven informing a potential purchaser
that computers have processing capability provides no
information to a consumer, even an educated consumer aware
of the nature of the goods … [because] all computers have
processing capability”; that there is no evidence of third-
party use of the term “the intelligence company” in a
descriptive manner; and that numerous registered marks for
software-related products include the term “intelligence”
without a disclaimer thereof.4

4 With its brief, applicant submitted copies of third-party
registrations. The record must be complete prior to appeal, and the
examining attorney has properly objected to consideration of this
evidence. Because this evidence is untimely, we have not considered it
in reaching our decision. Trademark Rule 2.142(d).
Serial No. 75/666,992 & 75/666,993
5
Applicant also argues that “intelligence” has
additional meanings unrelated to computer processing
capability; that one such meaning is “the ability to learn
or understand or to deal with new or trying situations”;
that applicant’s mark “is intended to evoke that image of
products [and the provision of services] that will grow for
the user, to become more efficient, more adaptable, and
provide more benefit to the user as use continues and new
and trying situations or factors arise”; that applicant’s
“employees are able to deal with new or trying situations
faced by its clients”; and that, as such, THE INTELLIGENCE
COMPANY is a double entendre that is not merely descriptive
in connection with applicant’s goods or services.
In support of their respective positions, the examining
attorney and applicant submitted the following definitions
of intelligence:
From Techencyclopedia, www.techweb.com, March 21,
2001 “intelligence” is “processing capability.”
From Merriam-Webster’s Collegiate Dictionary,
www.yourdictionary.com, 2001, “intelligence”
includes “1. the ability to learn or understand or
to deal with new or trying situations; 5. the
ability to perform computer functions.”
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Serial No. 75/666,992 & 75/666,993
6
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, 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 find that, considering the mark in its entirety, it
is not merely descriptive. Clearly, the terms “The” and
“Company” have little or no trademark significance alone.
However, THE INTELLIGENCE COMPANY, when considered in
connection with applicant’s identified goods and services,
connotes a company with intelligence, i.e., defined as
“the ability to learn or understand or to deal with new or
trying situations.” At most, it is suggestive of the
purported qualities of its employees or the skill with which
applicant renders its services, or suggestive of the quality
of applicant’s software.
Serial No. 75/666,992 & 75/666,993
7
Even if prospective customers of applicant were to
understand the term “intelligence” in THE INTELLIGENCE
COMPANY as referring to “computer processing ability,” it is
too general a concept to be merely descriptive in connection
with the identified goods and services. Thus, while there
may be a double entendre quality to the mark, both meanings
are, at most, suggestive. To consider the term
“intelligence” to be descriptive of the nature of
applicant’s goods and services is a significant mental
leap.5
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.

5 Further, the examining attorney has not established whether the term
“intelligence” is likely to be understood as none, one or all of the
terms “business intelligence,” “artificial intelligence,” or
“surveillance intelligence.”