SimDesk Technologies, Inc.

Trademark Trial and Appeal Board

May 31, 2007

No. 78301340 (T.T.A.B. May. 31, 2007)

Mailed: May 31, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SimDesk Technologies, Inc.
________

Serial No. 78301340
_______

Scott J. Stevens of Woodard, Emhardt, Moriarty, McNett &
Henry LLP for SimDesk Technologies, Inc.

Tina L. Snapp, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Hairston and Kuhlke, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

SimDesk Technologies, Inc. has appealed from the final
refusal of the trademark examining attorney to register
SHARED RESOURCE LOCATOR as a trademark for “software for
locating stored electronic files and securely sharing them
among users and groups on a global computer network.”1

1 Application Serial No. 78301340, filed September 17, 2003, and
asserting a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78301340
2
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive of its
identified goods.
Applicant and the examining attorney have filed
briefs. We affirm the refusal to register.
The examining attorney contends that the mark is
merely descriptive because “it clearly indicates to
potential purchasers that the applicant’s software is for
locating electronically stored resources and sharing them
among computer network users.” (Brief, p. 3) In support
of her position, the examining attorney submitted the
following definitions from the Merriam-Webster Online
Dictionary:
share: to partake of, use, experience, occupy,
or enjoy with others

resource: a source of supply or support

locator: one that locates something

In addition, she submitted a definition of the term
“shared resource” as “[a] hardware device, software
program, or a segment of data capable of being utilized by
more than one computer or people at once. A great example
of a shared resource is a shared printer on a network.”
(http://www.computerhope.com/jargon/s/sharreso.htm)
Ser No. 78301340
3
Applicant, however, contends that its mark is at most
suggestive because the mark has two possible meanings, one
meaning being a means for locating jointly-used electronic
files (“shared resource” modifies “locator”), and the other
meaning being a jointly-used or universal means for
locating electronic files (“shared” modifies “resource
locator”). Applicant argues that consumers are likely to
associate the latter meaning with applicant’s goods because
computer users are familiar with the term “uniform resource
locator” (“uniform” modifies “resource locator”). At the
very least, according to applicant, consumers will be left
to their own imagination or investigation to determine what
attributes the mark suggests. Finally, applicant urges
that we resolve any doubt on the question of mere
descriptiveness in its favor.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 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
Ser No. 78301340
4
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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 or intended to be 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 or intended
use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Thus, “[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 Corporation, 226 USPQ 365, 366 (TTAB
1985).
Applying these principles in the present case, we find
that the mark applicant seeks to register, SHARED RESOURCE
LOCATOR, is merely descriptive of the goods identified in
the application, “software for locating stored electronic
files and securely sharing them among users and groups on a
Ser No. 78301340
5
global computer network.” With respect to the individual
terms in applicant’s mark, each term has descriptive
significance as applied to applicant’s goods. The term
“locator” has descriptive significance because applicant’s
goods are identified as “software for locating …,”.
Further, an electronic file is a type of resource, and
applicant’s software shares electronic files. Each of the
words in applicant’s mark has a readily-understood merely
descriptive meaning as applied to the goods, and they are
as merely descriptive when considered in the composite as
they are when considered separately. Viewed in connection
with applicant’s goods, the mark immediately informs
prospective purchasers of the purpose or function of the
goods, namely, that applicant’s software locates and shares
resources, i.e., the software is a “shared resource
locator.”
We are not persuaded by applicant’s arguments to the
contrary in opposition to the mere descriptiveness refusal.
Applicant misstates the test for mere descriptiveness by
contending that because the mark has two possible meanings,
it is not descriptive and purchasers would not be able to
determine, simply by viewing the mark, what the goods are
or what they do. In re American Greetings Corporation,
supra, 226 USPQ at 366.
Ser No. 78301340
6
In sum, we have no doubt that the term SHARED RESOURCE
LOCATOR would be immediately recognized by prospective
purchasers as a term that is merely descriptive of the
purpose or function of applicant’s identified goods.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.