Network Engines, Inc.

Trademark Trial and Appeal Board

Dec 14, 2000

No. 75427820 (T.T.A.B. Dec. 14, 2000)

12/14/00 Paper
No. 10
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Network Engines, Inc.
________
Serial No. 75/427,820
_______
James B. Lampert of Hale and Dorr LLP for Network Engines, Inc.
Rebecca L. Gilbert, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Acting Managing Attorney).
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Network Engines, Inc. has filed an application to
register the term "NETWORK ENGINES" for "fault-tolerant clustered
servers."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the term
"NETWORK ENGINES" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
1 Ser. No. 75/427,820, filed on February 2, 1998, which alleges dates
of first use of August 1, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/427,820
2
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the goods or
services for which registration is sought, the context in which
it is being used on or in connection with those goods or services
and the possible significance that the term would have to the
average purchaser of the goods or services because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
Applicant, reiterating the statements which it made in
its response to the initial Office action, acknowledges in its
brief that:
Ser. No. 75/427,820
3
Applicant notes that the term "engine"
is defined in computer terminology as "the
portion of a program that determines how the
program manages and manipulates data; another
name for processor; a piece of hardware that
encapsulates some function but can't be used
without some kind of front end of an
analogous piece of software." However,
according to The American Heritage College
Dictionary, third edition ... 1993, the first
definition of "engine" is a "machine that
converts energy into mechanical force or
motion." The term engine also has common
meanings including a gasoline engine used in
automobiles, a fire engine or a locomotive
engine.
While noticeably omitting any explanation as to why the "common"
or other non-computer meanings of the term "engine" would somehow
be relevant in the context of its "fault-tolerant clustered
servers," applicant nevertheless argues that:
It is clear that a mark is not
descriptive if it connotes more than one
meaning; one of the definitions may be
descriptive, but others suggest some other
association. In that sense, the present mark
may be reminiscent or suggestive of a fault-
tolerant clustered served, but it is not
"merely descriptive."
Applicant further contends, as it has maintained since
its initial response to the refusal to register, that:
The mark sought to be registered is not
simply "engine" but is rather the two word
mark NETWORK ENGINES. As shown by the
brochure submitted ..., Appellant's goods are
useful over a wide range, and are neither
limited to, nor understood to be used only in
"networks." The non-descriptive nature of
the mark is emphasized in that the text of
the brochure nowhere even uses the word
"network" in describing Appellant's clustered
server product.
Applicant concludes, therefore, that "consumers would be required
to exercise thought and imagination in order to understand the
Ser. No. 75/427,820
4
nature of the goods clearly, a fact that indicates the mark does
not convey immediate, direct knowledge about the goods and is at
most, suggestive" rather than merely descriptive.
The Examining Attorney, on the other hand, maintains
that "the term 'NETWORK ENGINES' immediately describes a
characteristic, function, feature, purpose or use of fault-
tolerant clustered servers." In this regard, the Examining
Attorney notes among other things that both The Random House
Personal Computer Dictionary (1991) and Webopedia (1999) define2
"server" as:
A computer or device on a network that
manages network resources. For example, a
file server is a computer and storage device
dedicated to storing files. .... A print
server is a computer that manages one or more
printers, and a network server is a computer
that manages network traffic. A database
server is a computer system that processes
database queries.
Servers are often dedicated, meaning
that they perform no other tasks besides
their server tasks. On multiprocessing
operating systems, however, a single computer
can execute several programs at once. A
server in this case could refer to the
program that is managing resources rather
than the entire computer.
In view thereof, and citing the definitions, respectively made of
record from Webster's New World Dictionary of Computer Terms (4th
ed.) and The New Hacker's Dictionary (3rd ed. 1996), which define
2 Conceding that such definitions have not previously been made of
record, the Examining Attorney requests in her brief that the Board
take judicial notice thereof. The request is approved inasmuch as it
is settled that the Board may properly take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel & Wire
Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Ser. No. 75/427,820
5
"engine" as "[t]he portion of a program that determines how the
program manages and manipulates data. Another name for
PROCESSOR" and as "1. A piece of hardware that encapsulates some
function but can't be used without some kind of front end ....
2. An analogous piece of software ...," the Examining Attorney
contends that the term "NETWORK ENGINES" immediately describes "a
function of the [applicant's fault-tolerant cluster] servers,
which are programs or devices which manage data on a network."
As further support for her position, the Examining
Attorney points out that:
The applicant itself uses the term
"engine" to describe its product. The
brochure which applicant submits to
prospective purchasers describes its cluster
servers as containing "10 independent engines
in a single chassis". .... In addition, the
applicant's specimen of use describes that a
feature of the product is "Hardware Windows
Acceleration - 32-bit Graphics Engine". ....
Also of note is the industry-wide usage of
the phrase "network engines" to describe
communication servers".
According to the Examining Attorney, the evidence "overwhelmingly
shows that 'network engines' are communication servers and, thus,
it is "clear that the term 'NETWORK ENGINES' describes a feature,
function, use, characteristic and purpose of the applicant's
fault-tolerant cluster servers.
In particular, we observe that the brochure furnished
by applicant, which refers to its "Fault-tolerant Load-balanced
Clustered Server" as providing "Torque for your Network," touts
such "Key benefits" as "Linear scalability: 100% performance
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. No. 75/427,820
6
increase each time you add another engine" and, as noted by the
Examining Attorney, "Clustering support: With 10 independent
engines in a single chassis, clustering is easy and affordable."
We also notice that, as contended by the Examining Attorney, the
"NEXIS" excerpts show that the term "network engine(s)" is used
in a descriptive, if not generic, manner in the field of computer
networks. Among the most pertinent examples thereof are the
following (emphasis added):
"Micro Agent contains a micro version of
the RealSecure network engine. The agent
sits at the network stack on a server and can
analyze packets at the data link ....
....
NetProwler sells for $7,995; while
RealSource costs $8,995 per network engine."
-- InternetWeek, June 14, 1999 and TechWeb
News, June 11, 1999;
"Users can pose queries on information
in Insight using Autonomy's pattern-matching
neural network engine." -- PC Week, April 5,
1999;
"RealSecure consists of a network
engine, a system agent and a console. The a
network engine, which resides on a dedicated
PC, monitors network transmissions for signs
of abuse and attack. ....
....
In addition, although the a network
engine can immediately update the console
with alerts, it maintains a separate database
that must be synchronized with the master
database ....
....
Axent's network engine also allows
administrators to create customized attack
signatures for any purpose, tightening
protection around extranets, database
applications, and ...." -- PC Week, February
15, 1999;
"Network Engines Inc. recently turned up
the volume on its initiative to increase its
Ser. No. 75/427,820
7
corporate visibility by helping to produce a
Net-based Aeorsmith concert. ....
....
.... The company also markets a P6000
Server, which offers the industry's highest-
density architecture, and can run as many as
10 network engines in a single chassis and up
to 60 processors in as little as 5 square
feet." -- Business Dateline, November 9,
1998;
"These modules, the firm says, are
designed to be installed at strategic
locations throughout the enterprise network
and include network engines and system
agents.
The network engines, ISS says, monitor
network traffic in real time for signs of
malicious intent ....
....
The RealSecure network engines sells
[sic] for $8,995 for a single perpetual
license ...." -- Newsbytes, October 6, 1998;
and
"The software consists of a network
engine, agent software for host-based
detection and a management console ...." --
InternetWeek, October 5, 1998.
In addition, we judicially notice the following
relevant definitions from The Computer Glossary (7th ed. 1995):
engine (1) a specialized processor,
such as a graphics processor. Like any
engine, the faster it runs, the quicker the
job gets done. See graphics engine and
printer engine. (2) Software that performs a
primary and highly repetitive function such
as a database engine, graphics engine or
dictionary engine. (3) Slang for processor;
network (1) An arrangement of objects
that are interconnected. See LAN and network
database. (2) In communications, the
transmission channels interconnecting all
client and server stations as well as all
supporting hardware and software;
server A computer in a network shared
by multiple users. See file server and print
server.
Ser. No. 75/427,820
8
In the present case, it is our view that, when used on
or in connection with applicant's "fault-tolerant clustered
servers," the term "NETWORK ENGINES" immediately describes,
without conjecture or speculation, a significant purpose or
function of such goods, namely, that they act as specialized
processors for manipulating and managing a computer network. As
the dictionary definitions make clear, applicant's fault-tolerant
clustered servers are computers on a network which perform the
processes necessary to the operation of the network. The "NEXIS"
excerpts, in fact, establish that the term used in the field to
describe processors or servers which are dedicated to managing
and manipulating network data is "network engine(s)."
Thus, and contrary to applicant's contentions, there is
nothing in the term "NETWORK ENGINES" which, when used in
connection with servers, including applicant's fault-tolerant
clustered servers, is ambiguous, incongruous or otherwise
susceptible to multiple meanings. Instead, just as those in the
field of computer networks would know or readily understand the
meaning of such terms as "print servers" or "printer engines" and
"graphics engines" or "graphics servers," the technically
knowledgeable and highly sophisticated purchasers and users of
applicant's goods would readily regard the term "NETWORK ENGINES"
as designating engines of a type for managing and manipulating
the operation of computer networks. Clearly, as borne out by the
"NEXIS" excerpts demonstrating use of the terminology "network
engine(s)" in the trade, it is the technical meaning of the word
"engine" in the computer field which, when used in conjunction
Ser. No. 75/427,820
9
with the word "network," would immediately have significance in
the context of applicant's goods rather than, as asserted by
applicant, the layman's parlance of "engine" as simply any
"machine that converts energy into mechanical force or motion."
Accordingly, because the term "NETWORK ENGINES" conveys
forthwith a significant function or purpose of applicant's
"fault-tolerant clustered servers," such term is merely
descriptive of applicant's goods within the meaning of the
statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.