Cunningham Holdings, LLC

Trademark Trial and Appeal Board

Mar 10, 2010

No. 77483523 (T.T.A.B. Mar. 10, 2010)

Mailed: 3/10/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cunningham Holdings, LLC
________

Serial No. 77483523
_______

Sherry H. Flax of Saul Ewing for Cunningham Holdings, LLC.

Andrea P. Butler, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cunningham Holdings, LLC filed, on May 27, 2008, an
intent-to-use application to register the mark BULKSERVERS
(in standard characters) for “rental of web servers” in
International Class 42.
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when
applied to the services, is merely descriptive thereof.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77483523
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
We first turn to an evidentiary matter. Applicant
submitted, for the first time with its appeal brief, copies
of seven third-party registrations of marks that include
the term “BULK” or “SERVER,” with neither a disclaimer of
the term nor a claim of acquired distinctiveness. The
examining attorney, in her brief, properly objected to the
submission as being untimely. Trademark Rule 2.142(d)
provides that the record should be complete prior to the
filing of an appeal, and that the Board will ordinarily not
consider additional evidence filed with the Board after the
appeal is filed. Accordingly, applicant’s evidence is
untimely, and it has not been considered in our
determination of this appeal. Even if considered, however,
it would not compel a different result on the merits of the
mere descriptiveness refusal. As pointed out by the
examining attorney, “the cited registrations use the term
‘BULK’ or ‘SERVER’ with non-descriptive or suggestive terms
and/or in a unitary manner. A refusal under Section
2(e)(1) or a request for a disclaimer of BULK or SERVER
would have been inappropriate in those cases.” (Brief, p.
6). In any event, we are not bound by the prior actions of
examining attorneys, and each case must be decided on its
Ser. No. 77483523
3
own facts; further, a mark that is merely descriptive
should not be registered on the Principal Register simply
because similar marks appear on the register. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001)(“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the board or this court.”).
We now turn to the substantive merits of the appeal.
The examining attorney maintains that the proposed mark
merely describes a feature of applicant’s services, namely
that applicant rents servers in bulk. In this connection,
the examining attorney submitted a page from applicant’s
website indicating that applicant “specialize(s) in bulk.”
The examining attorney also introduced dictionary
definitions of “bulk” and “server.” Further, the examining
attorney submitted evidence to show that a “bulk server” is
a particular type of server that handles bulk emails or a
large workload.
According to applicant, the term “bulk” does not
describe anything about applicant’s services. As to the
term “servers,” applicant points to six different
dictionary definitions of the term. Thus, applicant
contends, “BULKSERVER could easily be understood to refer
Ser. No. 77483523
4
to a large serving tray.” (Brief, p. 2). Applicant also
points to the absence of any dictionary listing for the
unitary term “bulk server(s).” Applicant submitted
excerpts from its website and asserts that its mark “refers
not to a particular type of web server but to a secure
collocation facility that provides rental of secure servers
of all sizes to meet the hosting needs of individuals and
small businesses”; and that applicant’s “use of BULKSERVERS
refers to the nature of the facility and the fact that it
has adequate capacity to meet the needs of many consumers.”
(Brief, p. 2).
A term is deemed to be merely descriptive of services
within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of a quality, characteristic,
feature, function, purpose or use of the services. In re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
(TTAB 2007); and In re Abcor Development, 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s services in order to be considered merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property
of the services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Ser. No. 77483523
5
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the services for which
registration is sought, the context in which it is being
used on or in connection with the services, and the
possible significance that the term would have to the
average purchaser of the services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Further, contrary to the gist of a portion of applicant’s
argument, the fact that a term may have meanings other than
the one the Board is concerned with is not controlling on
the question of mere descriptiveness. In re Bright-Crest,
Ltd., 204 USPQ at 593.
The term “bulk,” is defined, in pertinent part, as
“large quantity of something”; the term “server” means
“dedicated computer which provides a function to a
network.” Dictionary of Computing (3d ed. 1998).
Ser. No. 77483523
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The examining attorney also introduced an excerpt from
applicant’s website:1
We Specialize in Bulk
Sure, you can rent just one server, but
we specialize in volume. We have
hundreds of high-quality servers with
top-tier hard-drives, processors, and
RAM. We’re happy to work with you on
bulk pricing. We’ll match any
competitor’s price.
(www.bulkservers.com)

A third-party’s website shows a similar descriptive use:
Resellers who buy five or more servers
will get discounts of up to 68% per
server. Customers can then use the
bulk servers to deliver upgrades to
their busier clients who require
dedicated server platforms.
(www.webhostinggeeks.com)

Based on the commonly recognized and understood terms
“bulk” and “servers” comprising applicant’s proposed mark,
we find that BULKSERVERS is merely descriptive of “rental
of web servers.” The mark immediately informs prospective
customers that applicant’s services feature the bulk rental
of servers. This feature is confirmed by applicant’s
website indicating that “we specialize in bulk” and that
“we’re happy to work with you on bulk pricing.” No
imagination or thought is required to discern this feature

1 In connection with this piece of evidence, the examining
attorney relied on a dictionary definition of the term “volume”
showing the term to mean “involving large quantities.”
(www.encarta.msn.com).
Ser. No. 77483523
7
of applicant’s services. See In re Associated Theatre
Clubs Co., 9 USPQ2d 1660 (TTAB 1988) (GROUP SALES BOX
OFFICE is merely descriptive of theater ticket sales
services).
Further, even if applicant did not “specialize in
bulk” rental of web servers, the proposed mark would still
be merely descriptive of rental services that feature a
particular type of servers, namely bulk servers. Inasmuch
as the recitation of services does not indicate the
specific type of “web servers,” or otherwise restrict the
type of servers that applicant rents, we must assume that
the web servers rented by applicant encompass all types of
such servers, including bulk servers. As shown by the
evidence introduced by the examining attorney, a “bulk
server” is a specific type of web server. Representative
examples are as follows:
Please fill out the form below...for
more information about our dedicated
bulk servers for website hosting.
(www.expeditemediagroup.com)

The bulk email sends out from a
different server than our company email
and we need to have bounce backs for
bulk jobs come back to the bulk server.
(www.stackoverflow.com)

Services like AOL, MSN, even Yahoo see
thousands of messages coming into their
services from Vortex or Vortex members
trying to communicate with their teams
Ser. No. 77483523
8
and either treat incoming mail as spam
(thus rejecting it out right) or re-
directing the email to bulk servers,
which stall and delay to the point that
email is returned (bounced).
(www.vortexmaxlife.blogspot.com)

Expedite email marketing
Benefits of our bulk email marketing
service:
Able to handle large bulk e-mail list
count.
Full reporting on each bulk email
marketing campaign.
Our bulk servers and bandwidth.
(www.expedite-email-marketing.com)

Those services route commercial email
through bulk servers which slow
delivery of email, sometimes even stop
delivery!
(www.xtreammembers.com)

Depending on how email servers are
programmed to deal with new emails sent
from bulk servers, can you predict the
delivery of your emails?
(www.optinweb.com)

Business-class Hosting
Until today online businesses have had
to choose between two extremes for
hosting:
-Using costly dedicated servers
-Being crowded onto overloaded and
poorly-secured “bulk servers”
(www.biztekinc.com)

Thus, the proposed mark BULKSERVERS, when used in
connection with the rental of broadly-worded “web servers,”
which in this case encompass the rental of all types of web
servers, including bulk servers, merely describes the
rental of bulk servers. The mark immediately informs
Ser. No. 77483523
9
prospective purchasers that applicant’s rental services
feature bulk servers. No imagination or thought is
required to discern this feature of applicant’s services.
See, e.g., In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007)
(LENS generic for “retail store services featuring contact
eyewear products rendered via a global computer network”).
In sum, whether applicant’s services feature bulk
rental of servers, or the rental of bulk servers, or both,
the proposed mark BULKSERVERS is merely descriptive of
applicant’s services.
Decision: The refusal to register is affirmed.