Microsoft Corporation

Trademark Trial and Appeal Board

May 4, 2012

No. 78863190 (T.T.A.B. May. 4, 2012)

Oral Hearing: October 20, 2011 Mailed: May 4, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Microsoft Corporation
________

Serial No. 78863190
_______

William O. Ferron, Jr., Seed Intellectual Property Law
Group PLLC for Microsoft Corporation.

Debra Lee, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Kuhlke, Mermelstein and Kuczma, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Microsoft Corporation, appeals the final
refusal of its application for the mark WINDOWS RALLY for
the following goods, “computer software for managing
network communications; computer software for connecting
computers, computer peripherals, digital cameras, cell
phones and software application programs to computer
networks; and computer software for managing power supplies
for computers; all in the nature of computer software
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78863190
2
platforms and computer software development tools for such
functions and uses” in International Class 9.
The examining attorney has refused registration on the
following four grounds: (1) the proposed amendment to the
identification of goods, namely, the wording “all in the
nature of computer software platforms and computer software
development tools for such functions and uses” exceeds the
scope of the last acceptable identification; (2) the
specimen of record does not show use of the applied-for
mark in connection with the identified goods; (3) the
applicant did not comply with the requirement to provide
information about the goods; and (4) the term WINDOWS is
merely descriptive in connection with the identified goods
and must be disclaimed.
Prosecution History
On April 17, 2006, applicant filed an application to
register the mark WINDOWS RALLY in standard characters on
the Principal Register for goods identified as:
Operating system software and utilities; computer
software for managing network communications;
computer software for connecting computers,
computer peripherals, digital cameras, cell
phones and software application programs to
computer networks; and computer software for
managing power supplies for computers.

The application was based on a bona fide intention to
use the mark in commerce under Section 1(b) of the
Serial No. 78863190
3
Trademark Act, 15 U.S.C. §1051(b). On November 28, 2006,
the mark was published for opposition and a Notice of
Allowance issued on February 20, 2007. After one
extension, applicant filed its Statement of Use on February
13, 2008. The prior examining attorney issued an office
action requiring applicant to disclaim the word WINDOWS or,
in the alternative, seek registration for this term based
on acquired distinctiveness under Section 2(f) based on
applicant’s ownership of prior U.S. registrations
containing this term.1 In response to the examining
attorney’s issuance of a final office action based on this
refusal, applicant amended its identification of goods by
deleting “operating system software and utilities” and
maintained that the disclaimer is improper because the term
WINDOWS is inherently distinctive as used in connection
with the goods set forth in the amended identification of
goods.
Applicant filed an appeal and a Request for
Reconsideration. The application was reassigned to the
current examining attorney who issued a new requirement for
a substitute specimen because the specimen submitted with
the Statement of Use did not show the mark in use with the

1 The term WINDOWS was registered under Section 2(f) based on a
showing of acquired distinctiveness in the prior registrations.
Serial No. 78863190
4
identified goods. In addition, she requested information
about the goods under Trademark Rule 2.61(b) and maintained
the requirement for a disclaimer of the term WINDOWS.
In response, applicant amended the identification of
goods to include “all in the nature of computer software
platforms and computer software development tools for such
functions and uses” and argued that the specimen was
acceptable because it shows the applied-for mark in
connection with the recited goods as they were proposed to
be amended. In addition, applicant provided information
regarding its goods indicating that they do not include
drivers and maintained that WINDOWS is inherently
distinctive as used in connection with the goods in the
amended identification.
The examining attorney did not accept the proposed
amendment, contending that it was beyond the scope of the
identification of record, and maintained the other
requirements. Applicant responded to the refusals by
arguing that the proposed amendment is proper, the specimen
should be accepted, the required information had been
provided, and the disclaimer requirement was improper.
The examining attorney issued a final refusal and the
appeal was resumed. An oral hearing was held on October
20, 2011.
Serial No. 78863190
5
Identification of Goods
We begin with the refusal to accept applicant’s
proffered amendment to the identification of goods, because
all of the other requirements are affected by the outcome
of that issue. An identification of goods in an
application may be amended to clarify or limit, but not to
broaden, the identified goods. Trademark Rule 2.71(a), 37
C.F.R. § 2.71(a). To determine whether a proposed
amendment is within the scope of the previously-listed
identification, we look to the “ordinary meaning of the
wording.” Trademark Manual of Examining Procedure (TMEP) §
1402.07(a)(8th ed. 2011). Further, “once the applicant has
expressly amended the identification of goods and services
to delete an item, it may not be reinserted in a later
amendment.” TMEP § 1402.06(a); In re Swen Sonic Corp, 21
USPQ2d 1794, 1796 (TTAB 1991).
To provide some context for the basis of this type of
refusal in connection with computer goods, we turn to the
TMEP which provides in pertinent part:
Any identification of goods for computer programs
must be sufficiently specific to permit
determinations with respect to likelihood of
confusion. The purpose of requiring specificity
in identifying computer programs is to avoid the
issuance of unnecessary refusals of registration
under 15 U.S.C. §1052(d) where the actual goods
of the parties are not related and there is no
conflict in the marketplace. See In re Linkvest
Serial No. 78863190
6
S.A., 24 USPQ2d 1716 (TTAB 1992). Due to the
proliferation and degree of specialization of
computer programs, broad specifications such as
“computer programs in the field of medicine” or
“computer programs in the field of education”
will not be accepted, unless the particular
function or purpose of the program in that field
is indicated. For example, “computer programs
for use in cancer diagnosis” or “computer
programs for use in teaching children to read”
would be acceptable.

Typically, indicating only the intended users,
field, or industry will not be deemed
sufficiently definite to identify the nature of a
computer program. However, this does not mean
that user, field, or industry indications can
never be sufficient to specify the nature of the
computer program adequately. For example,
“computer programs in the field of geographical
information systems” would be acceptable.
Geographical information systems, also known in
the industry as GIS, are well-defined computer
applications that do not need further definition.
If the identification in the application does not
adequately specify the nature of a computer
program, further information may be requested.
Any questions concerning the recognition of a
term of art for a computer program should be
discussed with senior attorneys, managing
attorneys, or other examining attorneys who are
knowledgeable in the computer field. ...

Generally, an identification for “computer
software” will be acceptable as long as both the
function/purpose and the field are set forth.
Some general wording is allowed. The following
wording is acceptable: ... (4) computer software
development tools: These programs are designed
to create other computer programs. This is one
of the few exceptions in which use of the term
“tools” is acceptable.

TMEP § 1402.03(d) (emphasis in original).
Serial No. 78863190
7
Examining attorneys begin their examination by
conducting a search of the USPTO database to determine if a
similar registered or prior pending mark exists that would
bar registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d). They base their analysis, in
considerable part, on a comparison of the respective
identifications of goods, and the ordinary channels of
trade and normal purchasers for those goods, as well as
their typical conditions of sale. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Thus, a later amendment that broadens the scope of goods
could present a situation in which a prior registration or
pending application that would have presented a bar to
registration was not cited, or other subsequently-filed
applications have gone forward over the amended
application.
As the Board has noted,
[t]he purpose of the requirements for the
identification of goods or services are to give
notice to third parties of the scope of the
rights claimed by applicant and to permit an
accurate search for conflicting marks. [T]he
identification of goods and services in an
application ... defines the scope of those rights
[constructive use and nationwide priority]
established by the filing of an application for
the Principal Register.

Serial No. 78863190
8
Swen Sonic Corp., 21 USPQ2d at 1795 (citations and internal
quotation marks omitted).
In the case of an application based on intent to use,
as is the case here, the public’s protection from abuse of
this system is the requirement for a statement of a bona
fide intent to use combined with a reasonably definite
identification that cannot be expanded.2
In the field of computers, the USPTO has developed
clear delineations for computer software in order to avoid
unnecessary refusals with a view to permitting allowance of
more applications, while at the same time providing
reasonable notice to the public of the rights which
applicant claims in its application. See TMEP § 1402.03(d)
(“Identifying Computer Programs With Specificity”); U.S.
Acceptable Identification of Goods and Services Manual
(Notices) (online at http://tess2.uspto.gov/netahtml/
notices.html).

2 Trademark Act § 1(b)(1)(A) “specifically requires all
applicants who apply to register a trademark on the basis of
intended use to state their bona fide intention to use the mark
in commerce on or in connection with all the goods identified in
the application. The goods must be identified with sufficient
specificity to confirm the bona fide nature of the applicant’s
intent and to permit those searching the trademark records of the
Patent and Trademark Office to determine the existence of
conflict. ... As the mark proceeds to registration, the goods
identified in the application may be narrowed, but they may not
be broadened.” S. Rep. No. 100-515 at 23-24 (1988).
Serial No. 78863190
9
As described above, applicant has amended and proposed
to amend its application as follows:
Operating system software and utilities; computer
software for managing network communications;
computer software for connecting computers,
computer peripherals, digital cameras, cell
phones and software application programs to
computer networks; and computer software for
managing power supplies for computers; all in the
nature of computer software platforms and
computer software development tools for such
functions and uses.

The stricken language was deleted and applicant later
sought to add the words in italics, the acceptability of
which is the issue before us. What must be determined is
the scope of the last accepted identification and whether
the proposed amendment is within the scope of that
identification. In general, the specimens of use or the
actual goods would not factor into the analysis. However,
applicant and the examining attorney have presented
arguments on this issue based on the specimen of use and
applicant’s actual goods. In this case, the possible
relevance of these facts pertains to whether “computer
software platforms” and “computer software development
tools” fall within the prior “software” identification
because the tool kit contains source code.
Applicant argues that the term “software” in the
identification “computer software for managing network
Serial No. 78863190
10
communications, [etc.],” encompasses both computer software
platforms and computer software development tools (also
referred to as a software development kit or SDK).
Applicant also argues that the product it actually
sells under the WINDOWS RALLY mark (i.e., the software
which is the subject of the specimen of record3) “has
software programs that perform the claimed functions” of,
for example, managing network communications. App. Br. p.
5. Applicant points to the source code included in its
development kit, asserting that software is a broad term
that encompasses source code residing in a tool kit. Id.
p. 6. Applicant asserts that developers can utilize the
source code in the SDK to provide the functionality listed
in the original identification and that the term “software”
includes “source code.” Applicant further states:
It is true that a programmer can use the SDK to
create other programs for specific devices to
perform the listed functions. But even under
this scenario, the WINDOWS RALLY SDK is still
“for” the specified functions. The term “for” is
defined as “a function word to indicate purpose”
or “to indicate an intended goal.” ... SDK
computer software providing all of the building
blocks for creating other programs performing the

3 Applicant’s specimen, the acceptability of which is discussed
below, consists of on-screen documentation associated with the
“Windows Rally Development Kit.” This kit comprises software
used for the development of computer programs, and includes
several examples of source code that can be customized by
programmers for end users, namely, “Link Layer Topology Discovery
(LLTD) Protocol – Responder Source Code” and two “Plug and Play
Extensions (PnP-X) Code Samples.”
Serial No. 78863190
11
listed functions is still “for” the listed
functions. In these instances, the SDK’s purpose
and intended goal is to provide those functions
in the form of the final software developed. The
WINDOWS RALLY SDK is undeniably for the listed
functions. Indeed, without the WINDOWS RALLY
SDK, those functions would not be provided.

App. Br. p. 7.

Applicant’s literature on the product includes the
following excerpts:
Device manufacturers who take advantage of the
Windows Rally technologies can reduce their
development and support costs, while increasing
their ability to innovate with devices that offer
new user experiences in media networking,
Internet communications, and device-to-PC and
device-to-device data exchange.

App. Response (May 4, 2009) p. 8; and

Microsoft Windows Rally technologies provide
device manufacturers with an architecture and
toolset for improving the security, reliability,
and usability of network-connected devices. ...

Id. at 10.

In addition, the website for the WINDOWS RALLY product
describes it as follows:
The Windows Rally program provides access to
Microsoft technology, streamlined licensing, and
technical guidance for hardware manufacturers,
software developers, and service providers who
want to use a common platform for state-of-the
art connectivity products and services for
customers. By using Windows Rally technologies
(formerly Windows Connect Now), hardware and
software developers can focus development
resources on product differentiation instead of
connectivity fundamentals.

Serial No. 78863190
12
www.microsoft.com (September 16, 2010, Office Action p. 2).
In support of its position, applicant relies, inter
alia, on the following definition of software: “Software
includes both source code written by humans and executable
machine code produced by assemblers or compilers.”4 This
definition begins with and includes the following:

4 Foldoc Free Online Dictionary Of Computing, http://foldco.org.
Applicant attached this definition from an online source to its
brief. The examining attorney specifically did not object to
this evidence and addressed it on its merits. In view thereof,
we have considered it.

Further, we note applicant’s reliance on a non-precedential Board
decision that includes the following excerpt from applicant’s own
dictionary: “The term [software] can refer to the original
source code or to the executable (machine language) version.”
Microsoft Computer Dictionary (5th ed. 2002). First, neither the
evidence submitted in a prior proceeding nor the prior panel’s
fact findings based upon it can be relied on here; moreover the
question of whether “software” includes source code was not the
issue in that case. Finally, while this entry indicates that the
term software standing alone can include source code, other, more
recent dictionaries do not include such a broad definition. See,
e.g., “Software ... programs that tell a computer what to do.
The term contrasts with hardware, which refers to the actual
physical machines that make up a computer system. The hardware
by itself is of little value without the instructions that tell
it what to do. Software can be classified into system software
(see Operating system) and application software. For examples of
common types of application software, see Word processing,
Spreadsheet, Database Management. For information on creating
software, see Programming and Programming language.” Dictionary
of Computer and Internet Terms (Barron’s 10th ed. 2009); and
“Software ... is also called a computer program that enables a
computer to perform a specific task, as opposed to the physical
components of the system (hardware). This includes application
software such as a word processor, which enables a user to
perform a task, and system software such as an operating system,
which enables other software to run properly, by interfacing with
hardware and with other software. Programs stored on non-
volatile storage built from integrated circuits (e.g., ROM or
PROM) are usually called firmware.” Network Dictionary (2007).
The Board may take judicial notice of dictionary definitions. In
Serial No. 78863190
13
Software The instructions executed by a
computer, as opposed to the physical device on
which they run ... Software can be split into
two main types – system software and application
software or application programs.5

Source code is described as:
is any collection of statements or declarations
written in some human-readable computer
programming language. ... A computer program’s
source code is the collection of files needed to
convert from human-readable form to some kind of
computer-executable form. The source code may be
converted into an executable file by a compiler,
or executed on the fly from the human readable
form with the aid of an interpreter.

re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Neither of these more recent definitions include source code as
within the definition of software. These definitions are in
alignment with the definition provided by applicant discussed
above that divides software into two categories, namely,
application and system software.

In addition, we note that “Application Software” is defined as
referring “to a complete and self-contained software that helps
the user accomplish a specific task.” Network Dictionary (2007).
“Source Code” is defined as “any series of statements written in
some high-level computer programming language. The term is
typically used in the context of a particular piece of computer
software. A computer program’s source code is the collection of
files that can be converted from human-readable form to an
equivalent computer-executable form in machine language. The
source code is either converted into an executable file by a
compiler for a particular computer architecture, or executed on
the fly from the human readable form with the aid of an
interpreter.” Id. This definition, similar to that provided by
applicant, indicates that source code is not by itself software,
to the extent that it cannot “tell a computer what to do” without
further processing.

5 Id.

Serial No. 78863190
14
http://en.wikipedia.org (September 16, 2010, Office Action
p. 13).
As noted above, acceptable software identifications
must indicate the function and field of use. Thus, an
acceptable software identification excludes software that
performs functions other than those directly listed. The
ordinary meaning of the wording “computer software for
managing network communications” interpreted with the
required specificity to indicate the function and field of
use can only refer to an executable application program and
does not include other functions such as serving as a
platform or development tool.
With regard to the addition “computer software
platform,” in the field of computers the term platform is
somewhat imprecise, but is generally used to refer to the
“hardware architecture or software framework (including
application frameworks), that allows software to run.
Typical platforms include a computers’ architecture,
operating system, programming languages and related runtime
libraries or graphical user interface.” E.A. Br. p. 12
(citing evidence attached to the February 19, 2010, Office
Action).
A development tool by its very nature has a function
different from the direct management of network
Serial No. 78863190
15
communications. A development tool provides “device
manufacturers with the best platform for creating
effortless, secure and reliable connectivity between their
devices and PCs, support for new connectivity scenarios,
and richer experiences for their customers while reducing
the cost and time of development.” May 5, 2009, Response
p. 8 (applicant’s product literature). A development tool
allows a device manufacturer to extend and/or modify the
network communications management functionality, which is
broader than a product that is complete and not designed to
be extended and customized to a device manufacturer’s
particular needs. While the software produced using the
software development kit ultimately may be for the same
purpose or field of use, i.e., for managing network
communications, it does not directly manage the network
communications.
Thus, a platform from which to manage the
communications networks and development tools that create
software are additional functions and, as such, the
addition of the wording “all in the nature of computer
software platforms and computer software development tools
for such functions and uses” exceeds the scope of functions
encompassed by the identification.
Serial No. 78863190
16
In addition, regarding applicant’s arguments based on
the source code in its development tool, the definitions
discussed above specifically indicate that “software” is
either system or application software by function; and it
is executable code, which is generated by the compiler from
source code. As noted by the examining attorney,
applicant’s evidence shows that the source code requires a
compatible compiler to produce a working program. Thus,
while the “source code” included in applicant’s software
development kit can be used to create software, it is not
itself software, and therefore does not fit within the last
acceptable identification. Moreover, even if we consider
the source code which is included in applicant’s software
development kit to be encompassed within the definition of
application software, it is only a component of the
additional development tool functions, which, as noted
above, exceed the scope of the identification. In other
words, the proposed amendment is not limited to application
software sold as a component of a software development kit.
The potential addition of “software development tools”
to the identification of goods also impacts the analysis
with regard to the ordinary channels of trade. The
ordinary channels of trade for the original identification
“computer software for managing network communications”
Serial No. 78863190
17
would focus on a very different user base, i.e., in-house
network administrators and other end users purchasing a
network communication application as opposed to the device
manufacturers targeted as users for applicant’s software
development kit. As the examining attorney notes, the
respective types of software are different and would be
marketed to different classes of consumers.
We further note, that applicant’s suggested
interpretation would improperly expand the scope of all
computer software identifications to include software that
functions as a development tool and computer software that
functions as a platform, which is contrary to both the
plain meaning of the identification and the requirement for
specificity in computer identifications. Once applicant
listed a function after “computer software” no matter how
one defines software and what is encompassed by that word
generally, the application was limited to the enumerated
function of managing network communications and the other
listed functions, e.g., connecting computers and computer
peripherals. Software with any other function, such as
development tools or platforms, was excluded by omission.
As noted above, in view of the specificity required
with computer software in particular, these differences
would affect the review of the register for potential bars
Serial No. 78863190
18
to registration under Section 2(d) of the Trademark Act and
adversely impact public notice regarding the scope of
rights that an identification of goods provides. In
summary, because the addition of “computer software
platform” and “computer software development tools”
includes functionality that exceeds the existing
identification, the amendment is beyond the scope of the
identification.
In view thereof, the examining attorney’s refusal to
accept the amended identification of goods was proper. In
re Swen Sonic Corp, 21 USPQ2d 1794, 1796 (TTAB 1991).
Specimen of Use
In view of our determination regarding the amendment
to the identification of goods, we make our determination
regarding the specimen of use based on the last acceptable
identification, i.e., “computer software for managing
network communications; computer software for connecting
computers, computer peripherals, digital cameras, cell
phones and software application programs to computer
networks; and computer software for managing power supplies
for computers.” The specimen is reproduced below:
Serial No. 78863190
19

Applicant’s arguments regarding the specimen of use
follow its arguments regarding the identification of goods
namely, that the software development kit shown in the
specimen:
...includes networking software for “sockets-
based implementation of LLTD” and “plug and play”
software code for connecting networking devices,
as claimed in applicant’s original description of
goods. Thus, under Applicant’s original goods
listing, the WINDOWS RALLY LLTD and plug and play
software code shown in the original specimen is
“computer software for managing network
communications” among other things.

App. Br. p. 8.
Serial No. 78863190
20
In response, the examining attorney argues that the
source code included in applicant’s software development
kit cannot, without further processing by a programmer,
perform the listed functions. E.A. Br. p. 16.
The specimen of use shows use of the proposed mark
WINDOWS RALLY in connection with a software development kit
that includes as a component, sample source code for
implementation of LLTD and code samples for use to turn any
networked device into an Windows plug and play device.
Specifically, the specimen of use includes the following
statement: “This portion of the Windows Rally Development
Kit contains the complete source code for a raw sockets-
based implementation or LLTD.” As the specimen of use
shows, WINDOWS RALLY is not used to identify the source
code in the identification, rather it identifies a
different product, a software development kit, in which the
LLTD sample source code is included.
Thus, even if we were to accept the premise that the
referenced source code is the equivalent of application
software, which we do not, at most the source code that
(when compiled) performs the application functions could be
considered a component of the development tool kit.
However, applicant has not identified its goods as computer
software for managing network communications sold as a
Serial No. 78863190
21
component of a software development kit. In any event,
such an identification would not be supported by the
specimen of record which shows WINDOWS RALLY used to
identify the kit and not simply one component of it. In
view thereof, the examining attorney’s refusal that the
specimen does not show use of the applied-for mark in
connection with the identified goods was proper.
Request for Information
An examining attorney “may require the applicant to
furnish such information and exhibits as may be reasonably
necessary to the proper examination of the application.”
Trademark Rule 2.61(b), 37 C.F.R. 2.61(b). Failure to
comply with such a requirement may form the basis of a
refusal. In re DTI Partnership LLP, 67 USPQ2d 1699, 1702
(TTAB 2003).
The examining attorney required applicant to specify
whether its software includes device drivers and to specify
whether any of the identified software goods feature
graphical user interface software featuring windows. The
examining attorney required this information in order to
make a determination as to whether the term WINDOWS is
merely descriptive as applied to applicant’s goods.
Although applicant provided a response, the examining
attorney maintained the refusal because:
Serial No. 78863190
22
The information provided by applicant is directed
only to its software development kit. Applicant
clarified that these goods are used by
programmers in connection with a graphical user
interface but that it does not create or manage a
graphical user interface itself. However,
applicant did not state for the record whether
the programs identified in this application,
namely, “computer software for managing network
communications [etc.]” feature a graphical user
interface that features program windows in the
sense of the rectangular frame on a computer
screen through which one views documents,
programs, and output. Therefore, applicant has
not complied with the information request issued
in under Rule 2.61(b) and this information is
required to clarify the descriptiveness of the
term “windows” as applied to the software set
forth in applicant’s identification of goods.

E.A. Br. p. 18.
Applicant argues that it plainly stated that the
WINDOWS RALLY software ‘does not create or manage a
graphical user interface.” Reply Br. p. 5. Applicant
referenced its statements submitted in its responses and
request for reconsideration. In its August 19, 2010,
Response to Office Action, applicant stated:
Applicant confirms that the software claimed in
this application does not create or manage a
graphical user interface. Rather, the primary
function of the WINDOWS RALLY software platform
is to interact with hardware devices for such
functions, for example computer networking –
something that does not involve a human
interface. When the development tools software
is being used, there is a graphical user
interface on a developer’s computer but it is
created and controlled by other software that is
not claimed in this application and not offered
under the WINDOWS RALLY mark. Applicant also
Serial No. 78863190
23
confirms that device drivers are not included in
the claimed goods.

First, the information required by the examining
attorney is directly relevant to the issue of mere
descriptiveness as to the term WINDOWS and thus “may be
reasonably necessary to the proper examination of the
application” and, as such, was proper. Further, we find
that applicant did not fully comply with the request.
While applicant has provided sufficient information about
its computer software platforms and development kit, in
light of our decision regarding the identification of
goods, we are constrained to analyze the response to the
requirement, not in connection with applicant’s proposed
amendment to computer software platforms or development
kits, but rather with the identified application software,
and there is no statement of record concerning the
identified application software.6

6 As discussed supra, the source code embedded within the
development kit is not an application or executable program in
that it must first be compiled. Thus, to the extent source code
is “software,” it is not the type of software encompassed by the
identification and therefore the responses to the requirement
pertaining to the SDK still do not comply. The reality is that
the identification as it now stands does not identify applicant’s
product (at least not the product which applicant has presented
in its specimen); therefore, applicant cannot make a statement
regarding something that does not exist. Nonetheless, we must
make a determination based on the last acceptable identification.

Serial No. 78863190
24
Disclaimer
As noted above, the examining attorney required that
applicant disclaim the word WINDOWS on the ground that it
is 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).7 An examining attorney may require an
applicant to disclaim an unregistrable component of a mark
otherwise registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Ginc UK
Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).

7 While applicant had been offered the opportunity to register
the term without a disclaimer under Section 2(f) based on
acquired distinctiveness, applicant did not seek to amend its
application to assert acquired distinctiveness in the alternative
to preserve this option. We are thus constrained to affirm on
this issue if we find WINDOWS to be merely descriptive for the
identified goods, notwithstanding any acquired distinctiveness in
the term WINDOWS applicant may have been able to prove.

Serial No. 78863190
25
A term is deemed to be merely descriptive of goods,
within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987), and In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods in order to be considered
merely descriptive; it is enough that the term describes
one significant attribute, function or property of the
goods. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
In re MBAssociates, 180 USPQ 338 (TTAB 1973).
We must consider the descriptiveness of WINDOWS with
respect to the goods for which registration is sought, and
in this case, we must make our determination in connection
with the last accepted identification.8 The examining
attorney argues that:
Applicant’s statements of record indicate that
its software is graphical user interface software
containing program windows. Specifically, in its
October 13, 2008 correspondence, applicant
states: “the fact that Applicant’s WINDOWS RALLY
programs have a graphical user interface, with
icons, dialog boxes and windows is not a

8 In view thereof, we do not reach the hypothetical and
alternative arguments regarding the proposed amended
identification.
Serial No. 78863190
26
significant feature in modern-day software and
‘windows’ should not be considered merely
descriptive of these goods.” ... Thus, the
evidence of record clearly shows that the term
“windows” immediately describes a feature of
applicant’s graphical user interface software
goods. Specifically, the word “windows”
immediately informs consumers that applicant’s
graphical user interface software features
“rectangular frames on a computer screen in which
images output by application programs can be
displayed, moved around, or resized.” Therefore,
the requirement for a disclaimer of the term
“windows” is proper under Section 6(a) of the
Trademark Act because this term is merely
descriptive within the meaning of Section 2(e)(1)
of the Trademark Act.

E.A. Br. p. 20.
In support of this position, the examining attorney
submitted the following dictionary definitions for
“window”:
The rectangular frame(s) on your computer screen
through which you view documents, programs, and
the Web. A windowing environment displays
multiple windows while enabling the machine to
run more than one program at the same time.

www.netlingo.com (November 12, 2008, Office Action p. 2);

A division of a computer display screen, which
has boundaries and is usually a rectangular area.
In a full-featured graphical interface, windows
can be opened, closed, and moved around on the
screen. The user can control the size and shape
of the windows; also windows can be overlapped,
and overlapping windows can be brought to the
front or sent to the back. ... Different
applications or files can be displayed on the
screen at the same time in different windows.

www.computeruser.com (April 12, 2008, Office Action p. 6);
Serial No. 78863190
27
Section on a computer screen: a rectangular
frame on a computer screen in which images output
by application programs can be displayed, moved
around, or resized.

(http://encarta.msn.com (November 4, 2008, Office Action p.
3); and
A rectangular area on the screen that displays
its own file or message independently of the
other areas of the screen.

The American Heritage Dictionary of the English Language
(4th ed. 2000) retrieved from www.bartleby.com (November 4,
2008, Office Action p. 5).
In addition, the examining attorney relies on a
Wikipedia entry titled “Graphical user interface” that
includes the following discussion:
A graphical user interface (GUI) is a type of
user interface which allows people to interact
with electronic devices such as computers ... A
GUI offers graphical icons, and visual
indicators, as opposed to text-based interfaces,
typed command labels or text navigation to fully
represent the information and actions available
to a user. The actions are usually performed
through direct manipulation of the graphical
elements. ... A GUI uses a combination of
technologies and devices to provide a platform
the user can interact with, for the tasks of
gathering and producing information. ... The
most common combination of such elements in GUIs
is the WIMP [window, icon, menu, pointing device)
paradigm ... The WIMP style of interaction uses
a physical input device to control the position
of a cursor and presents information organized in
windows and represented with icons. ... GUIs
were introduced in reaction to the steep learning
curve of command-line interfaces (CLI), which
require commands to be typed on the keyboard
Serial No. 78863190
28
...WIMPs, on the other hand, present the user
with numerous widgets that represent and can
trigger some of the system’s available commands.
... Most modern operating systems provide both a
GUI and some level of CLI, although the GUIs
usually receive more attention. ...
Applications may also provide both interfaces,
and when they do the GUI is usually a WIMP
wrapper around the command-line version. This is
especially common with applications designed for
Unix-like operating systems. The latter used to
be implemented first because it allowed the
developers to focus exclusively on their
product’s functionality without bothering about
interface details such as designing icons and
placing buttons. Designing programs this way
also allows users to run the program non-
interactively, such as in a shell script.

http://en.wikipedia.org (July 21, 2009, Office Action pp.
5-7).
Finally, the examining attorney relies on excerpts
retrieved from the Internet of “user documentation” for
“different software applications” to show that the term
“windows” is used “to refer to a common element found in
graphical user interface software.” Br. p. 24. A few
excerpted examples are set forth below:
GUI is an abbreviation for Graphical User
Interface, which usually consists of menus,
buttons, text boxes, and other familiar gadgets
By default, PyMOL actually has two GUI’s: (1) an
“Internal” GUI which appears inside the Viewer
Window, and (2) an “External” GUI which appears
inside of its own window. ... The Internal GUI
contained within this window (right) allows you
to perform actions on specific objects and
specific atom selections. From top to bottom, it
contains an object list, a mouse button
configuration matrix ... The Viewer also
Serial No. 78863190
29
contains a command line (bottom) which can be
used to enter PyMOL commands. It is also
possible to view PyMOL text output in the Viewer
window-you can hit the ESC key anytime to toggle
between text and graphics mode inside the Viewer
window.

http://pymol.sourceforge.net (July 21, 2009, Office Action
pp. 10-11); and

The McIDAS Graphical User Interface (GUI) lets
you display images and data without using the
McIDAS Text and Command Window. However, you can
still run commands from the McIDAS Text and
Command window while the GUI is displayed.

www.unidata.ucar.edu (July 21, 2009, Office Action p. 16).
Applicant’s arguments are primarily directed to the
goods as amended. However, applicant does generally argue
that “because of the ubiquitous nature of graphical user
interfaces in modern PC software, the term ‘WINDOWS’
conveys no descriptive information about the product.”
App. Br. p. 15.
In support of its position that “windows” is not
merely descriptive, applicant submitted excerpts of
marketing materials from third-party websites showing that
“vendors tout[] features like advanced security, real time
application debugging ..., not that they offer ‘window’
displays.” May 4, 2009, Response.
In addition, in a declaration attached to the May 4,
2009, Response applicant’s Senior Lead Designer for the
Serial No. 78863190
30
Windows User Experience, Denise Trabona, attests that GUIs
are now the industry norm and are a “ubiquitous aspect of
PC software.” Further she states:
The term “window” or “windows” does not convey
any particular information, significance or
meaning to users about the nature of a modern
computer program or its features. This is
because virtually all computer programs,
applications and utilities today are displayed in
a GUI with window display areas. Saying that a
program has a “window” or “windows” does not
immediately give consumers information to any
degree of particularity as to the qualities,
features or characteristics of the program.
Thus, for example, a consumer seeing the marks
WINDOWS RALLY or WINDOWS POWERSHELL on computer
software would be left to guess what that
software was – e.g., a video game, a word-
processing program, or some other program or
utility – and what it could do. The nature of
the goods is not revealed by inclusion of
“windows” in the mark.

As noted above, applicant’s statements in the record
regarding the absence of drivers and that the goods do not
create or manage GUIs pertain to the platform and
development tool kit but not to the application software
identified by the last accepted identification.9 Therefore,

9 In fact, statements made by applicant earlier in the
prosecution of the application prior to applicant’s proposed
amendment to the identification contradict its later statements.
See, e.g., October 13, 2008, Response “the fact that Applicant’s
WINDOWS RALLY programs have a graphical user interface, with
icons, dialog boxes and windows is not a significant feature in
modern-day software”; and May 4, 2009, Response “the fact that
applicant’s WINDOWS RALLY software is PC software and operating
in a graphical user interface environment describes nothing to
consumers about the nature of the software. ... Applicant’s
goods use windows to display its output, but all software does
Serial No. 78863190
31
we must make our determination about the identified
application software, including one that utilizes a
graphical user interface.
The evidence of record clearly establishes that the
term WINDOWS means “a rectangular frame on a computer
screen in which images output by application programs can
be displayed, moved around, or resized,” and is a feature
of a graphical user interface that uses a “combination of
technologies and devices that provide a platform the user
can interact with.” Further, the record shows that just as
windows are ubiquitous interfaces included in software
programs, the term windows continues to be used
ubiquitously by others to describe such a feature. Thus,
with regard to the last acceptable identification, because
we do not have a statement of record that the computer
software for managing network communications, etc. does not
create or manage a GUI, we are constrained to find that the
term WINDOWS is merely descriptive of a significant feature
of the goods. As noted above, it is not necessary that the
term convey information as to each attribute; it is enough
if the term describes one significant aspect. The type of

that. Windows gives no information whatsoever as to the function
or purpose or even nature of the actual program.”
Serial No. 78863190
32
interface a program provides is significant despite its
ubiquity.
In addition, applicant argues that the mark WINDOWS
RALLY is incongruous, stating:
If “WINDOWS” in the mark refers to rectangular
display areas in a user interface, what is a
“WINDOWS RALLY”? A rallying of these display
spaces? ... Ascribing the asserted descriptive
meaning to the mark as a whole creates “a term so
incongruous or unusual as to possess no
definitive meaning or significance other than
that of a mark identifying the goods.” ... The
literal description of the term “WINDOWS” as
proposed by the Examining Attorney makes little
sense when applied to the mark “WINDOWS RALLY”
because such a description, as stated above,
would mean something like a rallying of
rectangular displays on a user interface, which
does not describe the applied for goods.
Instead, a multi-stage reasoning process or
imagination is necessary before consumers would
be able to make any sense out of the WINDOWS
RALLY mark.

App. Br. pp. 16-17.

Taken in the context of the goods as identified, we
find no incongruity in the juxtaposition of the merely
descriptive term WINDOWS with the term RALLY. The word
“windows” immediately describes a significant feature of a
GUI and the addition of the term RALLY does not create a
bizarre or incongruous meaning as applied to the goods.
See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968). Moreover, there is nothing in the record upon
which to base a conclusion that potential consumers of such
Serial No. 78863190
33
application software would require “a multi-stage reasoning
process ... to make any sense out of the WINDOWS RALLY
mark.” App. Br. p. 18.
In view of the above, we are persuaded by the evidence
of record that the phrase WINDOWS is merely descriptive of
applicant’s goods, as identified in the last acceptable
identification, in that the term immediately describes a
significant feature of the goods, namely that they include
a GUI that features windows.
Decision: The refusal to accept the amended
identification of goods, the requirement for a substitute
specimen, the requirement for more information about the
goods, and the requirement for a disclaimer under Trademark
Act Section 6(a), are affirmed.