Platinum Technology, Inc.

Trademark Trial and Appeal Board

Nov 29, 1999

No. 75137097 (T.T.A.B. Nov. 29, 1999)

Paper No. 17
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Platinum Technology, Inc.
________
Serial No. 75/137,097
_______
Martin R. Greenstein of TechMark for Platinum Technology,
Inc.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney).
_______
Before Hanak, Bottorff and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Platinum Technology, Inc. (applicant) seeks to
register REALTIMEXTRACT for “computer software for use in
database access, navigation, implementation,
administration, conversion, migration and management;
computer software for database query and reporting;
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2
computer software for client/server and remote computing
applications; computer software utilities; computer
software containing database system tools; computer
software providing access to global computer networks and
wide area networks; computer software for system
management; and instructional manuals sold as a unit.” The
intent-to-use application was filed on July 22, 1996.
The Examining Attorney refused registration pursuant
to Section 2(e)(1) of the Trademark Act on the basis that
applicant’s mark is merely descriptive of applicant’s
goods. In addition, citing Trademark Rule 2.61(b), the
Examining Attorney also refused registration on the basis
that “applicant has not submitted product literature
relevant to [applicant’s] software product.” (Examining
Attorney’s brief page 6).
When the refusal was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
We turn first to a consideration of whether
REALTIMEXTRACT is merely descriptive of applicant’s
Ser No. 75/137,097
3
computer software. At the outset, we note that the issue
before us is not whether the phrase “real time extract” is
merely descriptive of applicant’s computer software.
Rather, the issue is whether the applied for mark
REALTIMEXTRACT is merely descriptive of applicant’s
computer software.
The Examining Attorney has made of record excerpts of
stories taken from the NEXIS database in which the word
“extract” appears in close proximity to the phrase “real
time.” At page 4 of her brief, the Examining Attorney sets
forth those five extracts which she deemed most pertinent
in demonstrating that applicant’s mark is merely
descriptive of its computer software. These five extracts
are reproduced below exactly as they appear at page 4 of
the Examining Attorney’s brief.
Cache operations happen too quickly to extract a
real time high level language trace…(Story 3 of
14).
NOMS is a client/server application in which
Window NT-based agents extract information in
real time from legacy mail-transportation systems
(Story 6 of 14).
…requirements is extremely important to the
success of the system to extract real time data
for inclusion into a centralized database for
satisfying the information management
requirements…(Story 7 of 14).
Ser No. 75/137,097
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…it shows greatest benefit as an audio front-end
to a database from which it can extract real time
information…(Story 10 of 14).
An IMS-based application…extracts this
information from the real time application (Story
13 of 14).
It is the position of the Examining Attorney that
these excerpts demonstrate that applicant's mark is merely
descriptive because “it is likely that the ability to
extract information in real time is an important function
of applicant’s software.” (Examining Attorney’s brief page
4).
At the outset, we note that the Examining Attorney has
failed to make of record any evidence showing the use of
the phrase “real time extract” with those three words in
that order. Moreover, the evidence made of record by the
Examining Attorney demonstrates the use of the word
“extract” as a verb, and not as a noun, as it would be in
the phrase “real time extract.” Of course, as might be
expected, none of the evidence made of record by the
Examining Attorney demonstrates use of REALTIMEXTRACT.
Applicant correctly points out, and the Examining
Attorney does not contend to the contrary, that its mark
REALTIMEXTRACT is a coined word. In this regard, reference
is made to the case of Firestone Tire & Rubber Co. v.
Goodyear Tire & Rubber Co., 189 USPQ 348 (CCPA 1976). In
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that case, the Court affirmed the decision of this Board
finding that Goodyear’s mark BIASTEEL was not
merely descriptive when applied to tires despite the fact
that the words “bias” and “steel” were common dictionary
words widely used in the tire industry. In so doing, the
Court had the following comments: “The proposed mark
[BIASTEEL] is a coined word, not to be found in a
dictionary. … As the board noted, the record is devoid of
evidence that appellant [Firestone] or anyone else has used
the words ‘bias’ and ‘steel’ together to describe tires.”
189 USPQ at 350. See also, Minnesota Mining & Mfg. Co. v.
Johnson & Johnson, 454 F.2d 1179, 172 USPQ 491 (CCPA 1972).
We find that the same reasoning applicable in
Firestone Tire and Minnesota Mining is equally applicable
here, and accordingly find that applicant’s mark
REALTIMEXTRACT is not merely descriptive of applicant’s
goods. Of course, to the extent that there may be any
doubts on the issue of whether applicant’s mark is merely
descriptive, it is the long standing practice of this Board
to resolve said doubts in applicant’s favor. In re Gourmet
Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Turning to the second basis for refusal, namely, that
purportedly “applicant has not submitted product literature
Ser No. 75/137,097
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relevant to [applicant’s] software product,” we find that
this refusal is without merit.
In the first office action, the Examining Attorney
stated that “the nature of [applicant’s] goods is not
clear”; that “applicant must submit samples of
advertisements or promotional materials for goods of the
same type”; and that “if such materials are not available,
the applicant must submit a photograph of similar goods and
must describe the nature, purpose and channels of trade of
the goods on which the applicant has asserted a bona fide
intent to use the mark.”
Applicant responded by submitting a description of
applicant’s current product line.
In the second and final office action, the Examining
Attorney responded to applicant’s submissions with the
following statements: “The requirement that applicant
submit product information is CONTINUED and made FINAL.
The Examiner is not interested in general information about
applicant’s many products. The Examiner was interested in
specific information about the product called
REALTIMEXTRACT. Please submit relevant information.”
In response, applicant submitted both a Notice of
Appeal and a Request for Reconsideration. Attached to the
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latter were additional and more detailed pieces of
literature describing applicant’s current product line. In
the Request for Reconsideration, applicant made the
following statements: “With respect to the Examiner’s
request for literature for this or similar products,
applicant previously submitted literature generally
describing its products, explaining that the product on
which the mark will be used is similar to the database
products and utility products sold by applicant. Applicant
submits herewith additional materials, namely data sheets
on three of its representative database products…”
In response to this Request for Reconsideration, the
Examining Attorney made the following comments: “The final
requirement that applicant submit product information which
pertains to this product is MAINTAINED. Literature on
other products of applicant is not probative of the use of
the term REALTIMEXTRACT in relation to this particular
product. The Examiner needs specific information about
this particular product in order to fully assess the mark.”
At page 6 of her brief, the Examining Attorney stated
as follows: “In this case the Examining Attorney has
repeatedly requested information about applicant’s software
product entitled REALTIMEXTRACT. Applicant has repeatedly
Ser No. 75/137,097
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provided information concerning other software products
which applicant has designed. Information pertaining to
these products is not relevant to a determination of the
descriptiveness of the mark in this application.”
In its reply brief, applicant pointed out that its
application is an intent-to-use application and “that it
would be impossible to comply with [the Examiner’s]
requirement since there was no such literature in
existence. … Applicant had fully complied [with the
Examiner’s request] to the extent possible. In fact, the
applicant provided literature for similar products in an
attempt to enlighten the Examiner regarding the nature of
[applicant’s proposed] products.”
To cut to the quick, we are not certain what the
Examining Attorney was requesting of the applicant. In the
first office action, the Examining Attorney requested
advertisements, promotional materials or photographs of
“similar goods.” Applicant complied with this requirement
to the extent that it submitted detailed product literature
describing its current product line and explaining that
said product line was similar to the computer programs on
which it intended to use the mark REALTIMEXTRACT.
Ser No. 75/137,097
9
However, in the second office action and in all
subsequent papers, the Examining Attorney requested product
literature pertaining specifically to non-existent products
to be sold in the future under the mark REALTIMEXTRACT.
Obviously, as pointed out by applicant, this requirement by
the Examining Attorney was impossible to comply with, and
thus was inappropriate.
If the Examining Attorney’s true desire was to receive
from applicant product literature put out by applicant’s
competitors describing products very similar to the
products on which applicant would in the future use its
REALTIMEXTRACT mark, the Examining Attorney should have
explicitly made such a request. Applicant would then have
been able to either supply such product literature from its
competitors, or explain that at the then present time, no
such product literature from competitors was available
because the computer programs on which applicant intended
to use the mark REALTIMEXTRACT were truly innovative.
However, at no time did the Examining Attorney request
product literature put out by applicant’s competitors, or
for that matter, by any third parties or others.
Decision: The refusal to register is reversed both on
the basis that applicant’s mark is not merely descriptive
Ser No. 75/137,097
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and on the basis that applicant did, to the fullest extent
possible, comply with the Examining Attorney’s request for
information concerning applicant’s future products to be
marketed under the mark REALTIMEXTRACT.
E. W. Hanak
C. M. Bottorff
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board