NIIT Ltd.

Trademark Trial and Appeal Board

Sep 24, 2002

No. 75888379 (T.T.A.B. Sep. 24, 2002)

Mailed: September 24, 2002
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re NIIT Limited
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Serial Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
_______
Marc B. Harrison of Venable, Baetjer, Howard & Civiletti,
LLP for NIIT Limited.
Cheryl L. Steplight, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On January 6, 2000 NIIT Limited filed the above
intent-to-use applications to register eight composite NIIT
marks for goods which were identified as “computer
software” in class 9.1
1 These applications also include services in classes 41 and 42.
However, the issue on appeal relates solely to the goods in class
9.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
2
The Trademark Examining Attorney, in her first office
action in each of the applications, advised applicant that
the identification of goods was unacceptable because it was
indefinite and required applicant to specify the function
of its computer software. In its response, applicant
stated that it intended to use the marks in connection with
a variety of goods, and thus, the identification of goods
should be accepted “as is.” The Examining Attorney was not
persuaded and issued a final office action in each
application requiring applicant to amend the identification
of goods and refusing to register the mark in the absence
of compliance with the requirement. Again, the Examining
Attorney pointed out that applicant must indicate the
function of its computer programs.
Applicant filed a notice of appeal and a request for
reconsideration in each application. By way of the request
for reconsideration, applicant amended the
identification of goods in the applications to read as
follows:
Computer software for use in conjunction with
conducting classes, seminars, and conferences
and workshops in the field of computer hardware
and software usage and information technology;
computer software for use in conjunction with
computer consulting services, computer software
consulting services, computer software writing
services, technical consultation for others in
the field of computer aided engineering and
Ser Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
3
engineering drawings, the design of computer
software and computer hardware for others and
computer programming for others.
The Examining Attorney denied each request for
reconsideration. Both applicant and the Examining Attorney
filed briefs, but no oral hearing was requested. The eight
cases have been consolidated and this single opinion is
being issued for the cases.
The sole issue on appeal is whether the identification
of goods, as amended, is acceptable. The Examining
Attorney, referencing Trademark Manual of Examining
Procedure Section 1402.02(d), contends that computer
programs must be identified with specificity so as to avoid
the issuance of unnecessary refusals of registration under
Section 2(d) of the Trademark Act. With the rapid growth
in computer programs and the increasing degree of
specialization, the Examining Attorney argues that it is
especially important that broad descriptions of computer
programs not be permitted, unless the particular function
of the program is also indicated. As to applicant’s
amended identification of goods, in particular, the
Examining Attorney argues that the language “for use in
conjunction with” in the identification does not
sufficiently specify the function of applicant’s computer
Ser Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
4
programs and would hinder Examining Attorneys in making
appropriate refusals under Section 2(d).
Applicant, on the other hand, argues that its amended
identification of goods complies with the requirement set
forth in the Examining Attorney’s final office action.
Trademark Manual of Examining Procedure Section
1402.03(d) is titled “Identifying Computer Programs with
Specificity” and states, in relevant part, that:
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. (citation
omitted). Due to the proliferation of
computer programs over recent years and the
degree of specialization that these programs
have, broad specifications such as “computer
programs in the field of medicine” or
“computer programs in the field of education”
should not be accepted unless the particular
function 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.
In this case, we agree with the Examining Attorney
that the amended identification of goods is not
sufficiently definite. In the absence of language
specifying the function of applicant’s computer programs,
Ser Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
5
it is all but impossible to discern their nature. For
example, as noted by the Examining Attorney, the language
“Computer software for use in conjunction with classes,
seminars, and conferences and workshops in the field of
computer hardware and software usage and information
technology” is broad enough to encompass computer programs
in the nature of a spreadsheet for recording grade point
averages to computer software containing course, testing
and evaluation materials. Similarly, the language
“Computer software for use in conjunction with computer
consulting services, computer software consulting services,
computer software writing services, technical consultation
for others in the field of computer aided engineering and
engineering drawing, the design of computer software and
computer hardware for others and computer programming for
others” is broad enough to encompass computer software for
word processing to computer software for use in creating
other computer software. Thus, it would be difficult for
Examining Attorneys to make proper refusals under Section
2(d) on the basis of the language in applicant’s amended
identification of goods.
In view of the foregoing, we find that applicant’s
amended identification of goods is unacceptable.
Ser Nos. 75/887,968; 75/887,969; 75/887,970; 75/887,971;
75/887,973; 75/888,281; 75/888,283; and 75/888,379
6
Decision: The requirement to amend the identification
of goods and the refusal to register in the absence of an
acceptable amendment is affirmed in each application.