Platinum Technology, Inc.

Trademark Trial and Appeal Board

Aug 12, 1999

No. 75072617 (T.T.A.B. Aug. 12, 1999)

Paper No. 20
RLS/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 12, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Platinum Technology, Inc.
________
Serial No. 75/072,617
_______
Martin R. Greenstein of TechMark for Platinum Technology,
Inc.
David H. Stine, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney)
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Platinum Technology, Inc. (applicant) has appealed
from the final refusal of the Trademark Examining Attorney
to register the mark SQL-ARCHIVE for
computer software for use in data management,
storage management, file migration, and the
backup, restoration and archiving of computer
system files in networked and heterogeneous
computing environments; computer software for
library management of computer files; computer
system software tools and utilities for backup,
restoration and management of files; and
Ser No. 75/072,617
2
instructional manuals sold as a unit therewith in
Int. Class 9.1
The Examining Attorney has refused registration under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1),
arguing that applicant’s mark merely describes goods
which consist of archive software which uses the SQL
(“structured query language”) in performing its
function. That is to say, the Examining Attorney
argues that applicant’s computer software performs the
function of archiving files using the SQL language.
Applicant’s identification generically lists
“archiving of computer system files” as one of
the primary functions of the software. Moreover,
even the most cursory review of applicant’s own
descriptive literature indicates that the goods
are used to back up and archive files, using SQL
language… Pages 1-4 of the applicant’s
literature indicates that the goods produce a
“readable representation of the SQL” and that the
backup file output generated by use of the
subject software “consists of SQL statements.”
It is respectfully submitted that software which
consists of an archive of SQL statements and
which uses SQL language to perform an archiving
function may be aptly described as an “SQL
archive.” This term is directly and clearly
descriptive of both a primary function and the
specific nature of the applicant’s computer
software.
Examining Attorney’s appeal brief, 3. Further, the
Examining Attorney believes that the combination of

1 Application Serial Number 75/072,617, filed March 14, 1996,
based upon an allegation of applicant’s bona fide intention to
use the mark in commerce.
Ser No. 75/072,617
3
the terms SQL and ARCHIVE is a standard construction
which is not incongruous. In summation, the Examining
Attorney argues that applicant’s computer programs
archive computer files using SQL, archive SQL data, or
consist of an archive of SQL data for use as a backup
copy of computer files, and the mark SQL-ARCHIVE is
thus merely descriptive of applicant’s goods. The
Examining Attorney has made of record computer
dictionary definitions of “SQL” and “archive.”
Applicant, on the other hand, while admitting
that the initialism SQL is commonly used in the
computer industry to mean “structured query language,”
argues that the mark as a whole is suggestive because
imagination and thought are required in order to
understand applicant’s goods. Applicant argues that
its asserted mark has no meaning in the industry,
although it concedes that the separate elements have
some significance in the computer field. Counsel
states that applicant’s products do not archive a
language. Applicant describes its products as
performing a series of complex functions, including
logical backups, physical backups, restoration,
verification, initialization and others. Applicant
indicates that the product operates on data and files
Ser No. 75/072,617
4
stored in various forms and media, including the
Microsoft SQL Server and the Sybase System10 system.
See Applicant’s Response, 2. Applicant contends that,
while it may use a structured query language as part
of its archive process, one must first dissect the
mark and then engage in mental gymnastics in order to
arrive at a descriptive meaning for applicant’s mark.
Applicant also points to its ownership of the
registered mark NETARCHIVE and such third-party
registered and applied-for marks as ARCHIVEMANAGER and
TAX ARCHIVE for CDs for storage of tax returns as
evidence that its mark is not merely descriptive.
Applicant also notes its ownership of other
registrations and applications which include the
component SQL, such as SQL-EASE, SQL SPY and SQL
COMMANDER. Finally, applicant argues that any doubt
should be resolved in favor of publication.
With respect to the third-party registrations,
the Examining Attorney argues that they are not
conclusive on the issue of mere descriptiveness of the
asserted mark.
Although this application is based on applicant’s
bona fide intent to use the mark, applicant, with its
first response, submitted a copy of its SQL-ARCHIVE
Ser No. 75/072,617
5
user guide, noted above. A portion of that brochure
is reproduced below.
Upon careful consideration of this record and the
arguments of the attorneys, we believe that the Examining
Attorney has made out a prima facie case that the asserted
mark is merely descriptive of applicant’s goods. There is
no question that applicant’s software uses the SQL
language. Moreover, as the Examining Attorney has noted,
applicant’s software is used, among other things, to
archive computer files. In other words, applicant’s
Ser No. 75/072,617
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computer programs use the SQL language to archive files.
Potential purchasers encountering applicant’s mark used in
connection with goods with these features will require no
thought or imagination to understand immediately the nature
of applicant’s goods.
Decision: The refusal to register is affirmed.
R. L. Simms
E. J. Seeherman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board