Open Software Associates, Inc.

Trademark Trial and Appeal Board

Sep 2, 1998

No. 74672089 (T.T.A.B. Sep. 2, 1998)

Paper No. 9
GDH/cj
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF THE TTAB SEPT 2,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Open Software Associates, Inc.
________
Serial No. 74/672,089
_______
Michael J. Bevilacqua of Hale and Dorr for Open Software
Associates, Inc.
Cheryl S. Goodman, Trademark Examining Attorney, Law Office 102
(Myra Kurzbard, Managing Attorney).
_______
Before Simms, Cissel and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Open Software Associates, Inc. has filed an application
to register the term "OPENUI" for "computer programs for use in
developing applications programs".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
"OPENUI" is merely descriptive of them.

1 Ser. No. 74/672,089 filed on May 10, 1995, which alleges a bona fide
intention to use the term.
Ser. No. 74/672,089
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Applicant, while conceding that "[t]he terms ’OPEN’,
’UI’, and ’USER INTERFACE’ are ... frequently used in reference
to" such goods and services as "computer hardware ..., computer
systems or architectures, or network services," emphasizes that,
by contrast, it "seeks registration for its mark in connection
with ’computer programs for use in developing applications
programs’." Applicant further asserts, without having furnished
any evidentiary support therefor, that because the terms "OPEN,"
"UI" and "USER INTERFACE" "have so many varied meanings," a mark
composed of them "is, by definition, ambiguous" and that,
accordingly:
Given this ambiguity, potential purchasers
confronting Appellant’s mark would not be
able to immediately discern that that mark is
used in connection with computer programs for
use in developing applications programs.
Only through exposure to and investigation of
the goods themselves would potential
purchasers understand the nature of the
goods.
In view thereof, applicant maintains that the term "OPENUI" is
"at most suggestive" of its goods.
The Examining Attorney, on the other hand, contends
that the term "OPENUI" signifies an open user interface and, as
such, "[merely] describes[s] a type of software programming tool
which creates open user interfaces" in connection with the
programming applications developed by applicant’s computer
programs. In support of her position, the Examining Attorney
Ser. No. 74/672,089
3
relies upon, inter alia, the following definitions of record from
The Computer Glossary (7th ed. 1995):
"open," which among other things is
listed at 279 as meaning "(3) Made to operate
with other products";
"UI," which is set forth at 413 by
reference to "See UNIX International and user
interface"; and
"user interface," which is defined at
417 as "[t]he combination of menus, screen
design, keyboard commands, command language
and help screens, which create the way a user
interacts with a computer. .... A well-
designed user interface is vital to the
success of a software package. ...."
We judicially notice, in addition, the following definitions from
the Microsoft Press Computer Dictionary (3d ed. 1997):2
"UI," which is listed at 482 by
reference to "See user interface"; and
"user interface," which is set forth at
488 as meaning "[t]he portion of a program
with which a user interacts. Types include
command line interfaces, menu-driven
interfaces, and graphical user interfaces.
Acronym: UI (U-I´)".
Moreover, as an aid to understanding some of the excerpts noted
below from the "NEXIS" database, the Examining Attorney made of
record and relies upon the definition of the following term from
the Random House Personal Computer Dictionary (2d ed. 1996):
"platform," which is defined at 413 as
"[t]he underlying hardware or software for a
system. ....

2 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.,
Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
Ser. No. 74/672,089
4
The platform defines a standard around
which a system can be developed. Once the
platform has been defined, software
developers can produce appropriate software
and managers can purchase appropriate
hardware and applications.
The term cross-platform refers to
applications, formats or devices that work on
different platforms. For example, a cross-
platform programming environment enables a
programmer to develop programs for many
platforms at once."
The record also contains various excerpts of articles
from the "NEXIS" database of which the following, including
stories on applicant’s "OPENUI" goods, are particularly pertinent
(emphasis added):
"First introduced in July 1990, XBUILD
is an open user interface development tool
(UIDT) for painlessly developing, testing,
and perfecting production-ready graphical
user interfaces ..." -- PR Newswire, November
26, 1990 (article headlined: "SIEMENS
NIXDORF UNVEILS NEW VERSION OF USER INTERFACE
BUILDER");
"The open user interface of TCP/IP is
not compatible with the proprietary system
developed for GSFC-mail ...." -- ASAP, April
1990;
"[The] product runs on Digital, Apollo,
Sun, IBM mainframe and IBM PC with the same
easy-to-use, easy-to-remember open user
interface. It also guarantees connectivity
integrity and data transportability between
all these different machines." -- Business
Wire, May 27, 1988;
"Open Software Associates (OSA), a
leading supplier of enterprise-scale
application development tools, today
announced version 3.5 of OpenUI, a release
that significantly extends the object-
oriented functionality, power and ease-of-use
of the company’s popular user interface
management system. OpenUI enables rapid
design and development of client/server
Ser. No. 74/672,089
5
applications across multiple platforms and
graphical user interfaces (GUIs). ....
....
OSA has developed a database interface
with full query and update capabilities for
developers looking to quickly develop a
working prototype of a user interface that
requires access to a database. .... Based
on the industry-standard Open Database
Connectivity (ODBC), OpenUI’s Database
Interface can utilize any vendor’s database
as a data source, as well as using multiple
data sources concurrently from different
vendors." -- PR Newswire, August 4, 1995; and
"OpenUI is OSA’s visual integrated
development environment that enables rapid
design and development of client/server
applications across multiple platforms and
graphical user interfaces (GUIs). ....
....
OpenUI’s architecture is uniquely suited
to the needs of enterprise-scale distributed
applications, allowing companies to
seamlessly integrate new corporate
applications with a standard GUI, using
existing networks. With OpenUI, developers
build applications on one GUI and then deploy
it across any network to any standard GUI in
their corporation without any redevelopment.
Applications developed using OpenUI also
ensure that a company’s investment in
technology is protected because they are
fully adaptable to all future computing
directions." -- PR Newswire, September 5,
1995.
In light of the above, the Examining Attorney asserts
that "the applicant’s computer software for use in developing
applications programs is an open user interface development tool
used for cross-platform programming of graphical user interfaces
or OPENUI." Specifically, the Examining Attorney reasons that
(footnote omitted):
The term OPEN is descriptive of the
ability of the applicant’s programming
software to create platform-independent code,
thereby enabling the graphical user
Ser. No. 74/672,089
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interfaces developed with applicant’s
software to "operate with other products,"
i.e., across multiple or cross (hardware or
software) platforms or open systems. UI is
descriptive of the function of the
applicant’s software, namely computer
software for use in developing applications
programs, specifically graphical user
interfaces. Applicant’s proposed mark OPENUI
is merely descriptive because it describes a
feature of the applicant’s software, namely,
computer software for developing open systems
applications programs in the nature of open
user interfaces that can be deployed across
multiple hardware or software platforms or
OPENUI. ....
With respect to applicant’s essentially unsupported
contention that the terms "OPEN" and "UI" have varied meanings
and hence a mark which combines such terms is inherently
ambiguous rather than merely descriptive, the Examining Attorney
correctly observes that:
The registration of a term created by
combining two or more [otherwise]
unregistrable words depends on whether[,] in
combination, a new and different commercial
impression is created, and/or the term so
created imparts a bizarre or incongruous
meaning as used in connection with the goods.
In re Associated Theatre Club[s] Co., 9
USPQ2d 1660 (TTAB 1988); In re Metcal Inc., 1
USPQ2d 1334 (TTAB 1986); In re Quik-Print
Copy Shop, Inc., 205 USPQ2d 505 (CCPA
1980)[.] The combination of two descriptive
words may result in nothing more than the
combination of two descriptive words. In re
IBP, Inc., 228 USPQ 303 (TTAB 1985); In re
Wink Corp.[,] 218 USPQ 739 (TTAB 1983); In re
Quik-Print Copy Shop, Inc., 205 USPQ 505
(CCPA 1980). Where the combination of two
descriptive words creates no incongruity, and
no imagination is required to understand the
nature of the goods, the mark remains merely
descriptive. In re Associated Theatre Clubs
Co., 9 USPQ2d 1660 (TTAB 1988); In re Gould
Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987);
In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB
1977); In re Scholastic Testing Service,
Ser. No. 74/672,089
7
Inc., 196 USPQ 517 (TTAB 1977); In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
The Examining Attorney insists that, in this case, the two
descriptive terms "OPEN" and "UI" are "known computer terms which
are in common usage in the [software] trade," as evidenced by the
dictionary definitions and "NEXIS" excerpts of record, and that
"the combination of the terms OPEN and UI do not create a bizarre
or incongruous meaning in connection with computer software for
developing applications programs." Instead, the Examining
Attorney maintains that the combined term "OPENUI" merely
describes the open user interface feature of applicant’s goods,
which are used to develop applications programs which can be used
with other vendors’ products and/or operate across multiple
hardware or software platforms.
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
Ser. No. 74/672,089
8
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).
In the present case, it is our view that, when applied
to computer programs for use in developing applications programs,
the term "OPENUI" would be regarded by the systems analysts,
software engineers and computer programmers who would constitute
the principal purchasers and/or users of such goods as
immediately describing, without any conjecture or speculation, a
significant feature or purpose of applicant’s goods. Although
Trademark Rule 2.51(d) requires that a typed drawing of a mark be
in all capital letters, thereby otherwise tending in this case to
obscure somewhat the fact that the term "OPENUI" is actually a
combination or telescoping of the descriptive terms "OPEN" and
"UI," the press reports regarding applicant’s "OpenUI" computer
programs, as shown by certain of "NEXIS’ excerpts, demonstrate
that such term typically is used in a manner in which its
component elements are readily recognizable. Moreover, to the
technically trained and highly knowledgeable purchasers and users
of applicant’s goods, the terms "OPEN" and "UI" would be clearly
discernible even when run together into the term "OPENUI".
Consequently, it is plain that in combining the terms "OPEN" and
Ser. No. 74/672,089
9
"UI", there is nothing in the combined term "OPENUI" which is
bizarre, incongruous, indefinite or ambiguous, especially when
viewed in the context of applicant’s goods.
In particular, the fact that in the computer software
industry, the term "UI stands for "user interface" and, like the
term "OPEN," is thus widely known and familiar to actual and
prospective buyers and users of applicant’s computer programs for
use in developing applications programs, means that there is
nothing which requires the exercise of imagination, cogitation,
mental processing or the gathering of further information in
order for the merely descriptive significance of the term
"OPENUI" to be immediately perceived. Plainly, to purchasers and
users of applicant’s goods, such term readily conveys that a
principal feature or purpose of applicant’s goods is to provide
an open user interface in applications programs developed with
applicant’s computer programs. Stated otherwise, "OPENUI"
computer programs are those which can be used to develop
applications programs which can be used or interfaced with other
vendors’ products and/or run on a variety of different hardware
or software platforms. Furthermore, as the dictionary
definitions and "NEXIS" excerpts make clear, the combination of
the descriptive terms "OPEN" and "UI" into the designation
"OPENUI" results in a term which has the same meaning which
ordinary usage in the trade would ascribe to the individual terms
in combination. See, e.g., In re Gould Paper Corp., 834 F.2d
1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) [term "SCREENWIPE,"
formed from combination of words "SCREEN" and "WIPE," is
Ser. No. 74/672,089
10
unregistrable for a "pre-moistened, anti-static cloth for
cleaning computer and television screens"].
Accordingly, because the term "OPENUI" forthwith
conveys that a significant feature or purpose of applicant’s
goods is the open user interface which its software creates, such
term is merely descriptive of computer programs for use in
developing applications programs within the meaning of the
statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. L. Simms
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board