Platinum Technology, Inc.

Trademark Trial and Appeal Board

May 18, 1999

No. 74523159 (T.T.A.B. May. 18, 1999)

Paper No. 29
EWH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/27/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Platinum Technology, Inc.
________
Serial No. 74/523,159
_______
Martin R. Greensten of Techmark for Platinum Techonology,
Inc.
Rita M. Odin, Trademark Examining Attorney, Law Office 109
(Deborah S. Cohn, Managing Attorney)
_______
Before Hanak, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Platinum Technology, Inc. (applicant) seeks to
register in typed drawing form PLATINUM OBJECT TRACKER for
“computer software for use in the field of databases,
database management and administration, database design and
implentation, database query and reporting, programming and
application development and instructional manuals
Ser No. 74/523,159
2
distributed therewith.” The application was filed on May
14, 1994 with a claimed first use date of April 15, 1993.
In the first office action, the Examining Attorney
stated that “appplicant must disclaim the descriptive
wording OBJECT TRACKER apart from the mark as shown.” In
support of her theory that OBJECT TRACKER is descriptive of
applicant’s goods, the Examining Attonrey made of record
excerpts of three stories appearing in the NEXIS database.
In response, applicant disclaimed the exclusive right
to use OBJECT apart from the mark as shown. However,
applicant refused to disclaim the phrase OBJECT TRACKER.
Applicant noted that the first of the three NEXIS excerpts
showed “applicant’s own use of OBJECT TRACKER as a
rademark,” and that the second and third excerpts (both of
which came from the same article) apparently dealt with the
tracking of physical objects such as missles and satellites
and hence these excerpts “would not be applicable to
database software such as that on which applicant uses its
mark.”
In the second office action, the Examining Attorney
made of record additional excerpts from the NEXIS database
which she contends demonstrates that the phrase OBJECT
TRACKER is descriptive of applicant’s goods and hence must
be disclaimed in its entirety.
Ser No. 74/523,159
3
In response, applicant submitted a list of various
TRACKER marks for computer software and computer programs
wherein the PTO did not require a disclaimer of TRACKER.
Appplicant contends that these third party marks
demonstrate that TRACKER is not descriptive as applied to
computer software or computer programs.
In response, the Examining Attorney made the following
comments in office action three at page 4: “Applicant
claims that the allownace of numerous other marks including
the word(s) ... ‘track’ or ‘tracker’ obligate the Examining
Attorney to withdraw the full diclaimer requirement and
pass this application to publication. Third-party
registrations are not conclusive on the question of
descriptiveness. The Examining Attorney must consider each
case on its own merits.” In this third (and final) action,
the Examining Attorney did not in any way indicate to
applicant that it must submit copies of the registrations
which applicant referenced. Instead, the Examining
Attorney made of record copies of other third-party
registrations containing the word TRACKER wherein said word
was disclaimed.
When the refusal to register was made final, applciant
appealed to this Board. Appliant and the Examining
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4
Attorney filed briefs. Applicant did not request a
hearing.
At the outset, one evidentiary matter must be disposed
of. At page 6 of her brief, the Examining Attorney argues
that applicant’s “third-party registrations were not
properly made of record.” In response, applicant’s
attorney attached to his reply brief copies of the third–
party registrations which he referenced, as well as
additional third-party registrations which issued
subsequent to the conclusion of the examination process.
Because the Examining Attorney did not, during the
course of the examination process, object to applicant’s
simply referencing certain third-party registraions, the
Examining Attorney’s argument in her brief that these
registrations have not been properly made of record is not
well taken. In re Nashua Corporation, 229 USPQ 1022, 1023
n.3 (TTAB 1986) (“Although the Examining Attorney in her
brief notes that actual copies of these [third-party]
registrations had not been submitted for the record,
throughout the examiniation process she considered
applicant’s arguments concerning these registrations and
argued in response to them. ... Because she treated them as
if they were of record we will accept applicant’s
Ser No. 74/523,159
5
submission with its reply brief on appeal as properly
making them of record.”).
Considering first the third-party registrations
submitted both by applicant and the Exaining Attorney, we
note that applicant correctly argues at page 4 of its brief
that third-party registrations can be used as a supplement
to dictionaries to demonstrate how the relevant purchasing
public interprets a particular word or phrase. More
precisely, third-party registrations can be utilized to
show that a particular word or phrase is suggestive (and
not descriptive) when applied to certain goods or services.
Spoons Restaurants Inc., v. Morrison Inc., 23 USPQ2d 1735,
1740 (TTAB 1991). (“Third-party registrations, of course,
may be used to indicate that a commonly registered element
has a suggestive meaning for particular goods or
services...”).
Turning to a consideration of the third-party
registrations, we note that virtually all of those
submitted by applicant are for computer software or
computer programs, whereas the third-party registrations
submitted by the Examining Attorney are evenly split
between those dealing with computer software and computer
programs, and those dealing with other types of goods or
services.
Ser No. 74/523,159
6
Having reviewed all of the third-party registrations,
we come to the conclusion that the PTO has taken a very
inconsistent position with regard to whether the word
TRACKER is suggestive or descriptive when applied to
computer software or computer programs. For example, one
simply cannot fathom why the following marks were
registered on the Principal Register for computer software
without any disclaimer of TRACKER if said word is
descriptive in the computer field, as contended by the
Examining Attornney: ORDER TRACKER; PART TRACKER; CUSTOMER
TRACKER; IRA TRACKER; PACKER TRACKER; LABOR TRACKER; QUOTE
TRACKER; FREQUENT FLYER AWARD TRACKER; and TEXTBOOK
TRACKER.
On the other hand, the Examining Attorney has made of
record a lesser number of third-party registrations for
computer software and computer programs wherein the word
TRACKER has been disclaimed. A review of all of the third-
party registrations indicates that in their totality, said
registrations very slightly favor applicant’s position, but
also reaffirm the principle that each case must be decided
on its own facts.
In arguing that TRACKER is not descriptive of its
computer software, applicant notes that the Examining
Attorney was simply unable to locate this word in any
Ser No. 74/523,159
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specialized computer dictionary, and that none of the
definitions of this word found in general dictionaries is
of any relevance as applied to computer software. In
constrast, applicant notes that the term OBJECT in its mark
does appear in one specialized computer dictionary, and it
was on this basis that applicant elected to voluntarily
disclaim the term OBJECT when requested by the Examining
Attorney to do so.
Finally, applicant notes that, as demonstrated by many
of the third-party registrations made of record by the
Examining Attorney, the word TRACKER is most often used in
a descriptive manner in conjunction with devices which
track physical objects or which track electronic
transmissions such as television signals, radio signals or
laser beams. According to applicant, its use of the phrase
OBJECT TRACKER in connection with computer software would
cause purchasers of said software to engage in “significant
mental gymnastics” because the term TRACKER is so strongly
associated with the tracking of physical objects or
electronic transmissions. There is no dispute that
applicant’s software performs neither of the two foregoing
functions. (Applicant’s brief page 4).
The Examining Attorney’s best evidence that OBJECT
TRACKER is, in its entirety, descriptive of applicant’s
Ser No. 74/523,159
8
computer software is one of the three original NEXIS
excerpts which she made of record with her first office
action. That excerpt is from the August 1, 1994 issue of a
publication called “Edge” and it reads in pertinent part as
follows: “PLATINUM OBJECT TRACKER -- Tracks usage of QMF
queries and procedures. ... Object Tracker now tracks data
and table activity.” According to the Examining Attorney,
on its face this NEXIS excerpt demonstrates that the word
TRACKER is descriptive when applied to applicant’s
software.
In response, applicant notes that this excerpt from
"Edge" depicts applicant's mark PLATINUM OBJECT TRACKER in
all capital letters, and that it later depicts the OBJECT
TRACKER portion of applicant's mark with initial capital
letters. According to applicant, this demonstrates that
applicant's mark is being used not in a descriptive manner,
but rather in a trademark manner. More importantly,
applicant argues that its computer software analyzes data,
and that if any "tracking" is occurring, it is being done
by QMF, which, according to applicant, is an initialism for
Query Management Facility. Given the fact that this NEXIS
excerpt made of record by the Examining Attorney is so
truncated, we are simply unable to ascertain with any
Ser No. 74/523,159
9
degree of certainty as to whether applicant’s latter
contention is correct or not.
In sum, we find this to be an extraordinarily close
case which is replete with doubt. According to long
standing Board practice, it is our policy to resolve doubts
on the issue of descriptiveness in applicant’s favor and
pass the mark to publication for possible opposition by
competitors or others. See In re Gourmet Bakers Inc., 173
USPQ 565 (TTAB 1972). This is a particular appropriate
procedure in this proceeding in view of the fact that the
PTO has in recent years repeatedly allowed marks to be
registered on the Principal Register for computer software
and programs without a disclaimer of TRACKER. The use of
the word TRACKER in many of these third-party registrations
appears to be decidedly more descriptive in nature than is
the use of the word TRACKER in applicant’s mark PLATINUM
OBJECT TRACKER.
Decision: The refusal to register is reversed.
E. W. Hanak
P. T. Hairston
Ser No. 74/523,159
10
B. A. Chapman
Administrative Trademark Judges
Trademark Trial and Appeal Board