American Power Conversion Corporation

Trademark Trial and Appeal Board

Sep 4, 2007

No. 78534217 (T.T.A.B. Sep. 4, 2007)

Mailed:
September 4, 2007
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re American Power Conversion Corporation
________

Serial Nos. 78534217 and 78598147
_______

Stephen J. Holmes of Barlow Josephs & Holmes, Ltd. for
American Power Conversion Corporation.

Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Walters, Bucher and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
American Power Conversion Corporation seeks registration
on the Principal Register
of the mark BLADE READY
(in standard character
format) as well as a second
mark shown in this special
form drawing. Both forms
of the mark will allegedly
be used in connection with
goods identified as
follows:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78534217 and 78598147
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“voltage surge protectors for sensitive
electronic equipment and computers; computer
software programs for use with power
protection devices for monitoring and
automatic shutdown of computer systems;
uninterruptible electrical power supplies,
electrical power supplies, modular electric
power supplies, AC power supplies, DC power
supplies, DC-DC converters, inverters,
batteries, electrical transformers and
electrical distribution devices in the nature
of boxes, consoles and electrical power outlet
strips; computer and computer networking
cables in the nature of ethernet networking
cables, thin ethernet networking cables,
universal serial bus cables, token ring
cables, V.35 cables, coaxial cables, parallel
printer cables, serial cables, fiber optic
cables for computer networking, keyboard
cables, monitor cables, mouse cables,
multimedia cables, audio cables, phone, modem
and fax cables, ribbon cables, and SCSI
cables; computer networking devices in the
nature of hubs, switches, routers, and
controllers; and interface devices in the
nature of computer interface boards and
universal peripheral interface hardware; rack
enclosures for housing computer and power
protection equipment and accessories”1 in
International Class 9.
In each application, applicant has disclaimed the
exclusive right to use the word “Blade” apart from the
respective marks as shown.
These cases are now before the Board on appeal from the
final refusals of the Trademark Examining Attorney to

1 Application Serial No. 78534217 [BLADE READY and design] was
filed on December 17, 2004 based upon applicant’s allegation of a
bona fide intention to use the mark in commerce. Application
Serial No. 78598147 [BLADE READY] was filed on March 30, 2005 based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
Serial Nos. 78534217 and 78598147
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register these designations under Section 2(e)(1) of the
Trademark Act based upon the ground that this combined
literal term is merely descriptive when considered in
relation to applicant’s identified goods, i.e., that the term
“Blade Ready” immediately informs potential purchasers about
the characteristic, feature, purpose and use of applicant’s
goods. In Application Serial No. 78534217, the refusal to
register is based upon applicant’s failure to disclaim, as
required, the merely descriptive term “Blade Ready” apart
from the mark as shown, under Trademark Act Section 6,
15 U.S.C. § 1056.
Applicant and the Trademark Examining Attorney submitted
briefs on the appeals in both cases. The marks, the legal
issues, the procedural histories, the overall records and the
appeal briefs are nearly identical in these two appeals.
Accordingly, these cases are considered together and
determined in a single opinion. We affirm both refusals to
register.
Is term merely descriptive?
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
Serial Nos. 78534217 and 78598147
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function, or characteristics of the goods or services.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive of
analgesic product]. See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE merely
descriptive of potpourri mixture]; and In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980)
[QUIK-PRINT is merely descriptive of “same day” services of
printing, photocopying, collating, binding, cutting,
drilling, folding, padding, stapling, and perforating]. To
be “merely descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay,
3 USPQ2d at 1009. Descriptiveness of a mark is not
considered in the abstract, but in relation to the particular
goods or services for which registration is sought. That is,
when we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can guess
what applicant’s goods are after seeing applicant’s mark
alone. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978) [GASBADGE merely descriptive of a “gas
monitoring badge”; “Appellant’s abstract test is deficient –
not only in denying consideration of evidence of the
advertising materials directed to its goods, but in failing
to require consideration of its mark ‘when applied to the
Serial Nos. 78534217 and 78598147
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goods’ as required by statute”]. Hence, the ultimate
question before us is whether the term BLADE READY conveys
information about a significant feature or characteristic of
applicant’s goods with the immediacy and particularity
required by the Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or characteristics
of the goods … with which it is used,’ or whether
‘imagination, thought, or perception is required to reach a
conclusion on the nature of the goods.’” (citation omitted)
In re Gyulay, 3 USPQ2d at 1009]; In re Home Builders
Association of Greenville, 18
USPQ2d 1313 (TTAB 1990) [NEW
HOME BUYER’S GUIDE merely descriptive of “real estate
advertisement services”]; and In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985) [APRICOT is merely descriptive
of apricot-scented dolls]. Rather, the proper test in
determining whether a term is merely descriptive is to
consider the applied-for mark in relation to the goods or
Serial Nos. 78534217 and 78598147
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services for which registration is sought, the context in
which the mark is used, and the significance that the mark is
likely to have on the average purchaser encountering the
goods or services in the marketplace. See In re Omaha
National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)
[the term “first tier”

describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs for
controlling the acquisition of data from measurement
devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991) [MULTI-VIS is merely descriptive of “multiple viscosity
motor oil”]; In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer
graphics programs]; and In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979) [COASTER-CARDS merely descriptive of a coaster
suitable for direct mailing].
In arguing for registrability, applicant contends that
its mark is suggestive at worst, arguing that the term “Blade
Ready” gives no indication to consumers that the goods
offered are solely available for immediate use with
specialized computer servers. Furthermore, applicant argues
that both words “Blade” [see footnotes 3 & 4] and “Ready”
Serial Nos. 78534217 and 78598147
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have each been registered when appearing in other composite
marks in this field. Finally, applicant argues that there is
no critical need for others in the industry to be able to use
this unique combination of terms.
The word “Blade”
According to the Trademark Examining Attorney, the word
“Blade” immediately identifies a special type of computer
tied together with clusters of other computers, traditionally
found in large data centers.
This setup requires advanced
power distribution, heat removal
and modular placement of the
“blades.” In addition to
applicant’s disclaimer of the
word “Blade,” the Examining
Attorney points to additional
evidence in the record, including
applicant’s own brochure, seen above.
The Trademark Examining Attorney also produced web pages
discussing various Intel blade server products with their
processor features and configurations,2 the HP BladeSystem

2 http://www.intel.com/
Serial Nos. 78534217 and 78598147
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server blades,3 and the IBM BladeCenter products and systems.4
In addition to issues of power distribution, heat removal and
modular placement, each vendor places different degrees of
emphasis on high speed I/O connectivity, redundancy, and
saving space with dense clusters of computers placed in a
Storage Area Network (SAN) or a Local Area Network (LAN).
The word “Ready”
Applicant and the Trademark Examining Attorney have
submitted various definitions for the word “Ready”:
“Ready: finished and available for use: finished or
completed and so able to be used immediately.”5
“Ready: “prepared or available for service.”6
“Ready: “prepared or available for service, action or
progress.”7

The word “Ready” is used by applicant as an adjective,
following and modifying the term “Blade.” The Trademark
Examining Attorney points to third-party registrations where
the term “Ready” is similarly modifying other merely
descriptive terms, resulting in phrases like “Fiberready,”

3 http://h71028.www7.hp.com/enterprise/cache/

4 http://www-03.ibm.com/

5 MSN Encarta® dictionary.

6 http://www.dictionary.com

7 AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fourth Ed. 2000.
Serial Nos. 78534217 and 78598147
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Servo-Ready,” “Web-Redi,” “Network-Ready” and “Grid Ready”
being found to be merely descriptive of class 9 goods:
FIBERREADY for “electrical raceway and
fittings therefor, namely
corners, elbows and tee
fittings suitable for
accommodating fiber optic
cable” in International Class
9;8
SERVO-READY for “brushless DC motors and
linear actuators for use with
drives and controllers” in
International Class 9;9
for “computer software used
to convert analog radio
signals into digital signals;
computer chips that convert
analog radio signals into
digital signals; computer
software used to decode
digital transmission signals
into audio, all sold as
components of radios” in
International Class 9;10
WEB-REDI SOLUTIONS for “computer software for
web site and database
integration” in International
Class 9;11

8 Registration No. 2371803 issued on the Supplemental Register
on July 25, 2000.

9 Registration No. 2652924 issued on the Supplemental Register
on November 19, 2002.

10 Registration No. 2832781 issued on April 13, 2004 with a
disclaimer of the terms “HD” and “Radio Ready.”

11 Registration No. 2858893 issued on June 29, 2004 with a
disclaimer of the words “Web-Ready.”
Serial Nos. 78534217 and 78598147
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for “radio frequency
identification (RFID) tag
reader apparatus; operating
system software used in
connection with an RFID tag
reader apparatus” in
International Class 9;12 and
Grid Ready Cabling for “telecommunications
cabling and hardware, namely,
telecommunications hardware
and cabling systems
comprising copper and fiber
cable, outlets, connectors,
adapters, plugs, patch cords,
patch panels, connecting
blocks, faceplates, surface
mount boxes, cable management
racks” in International Class
9.13

We find, for example, that applicant’s goods enumerated
herein bear the same relationship to a “blade” that the
FIBERREADY goods (“… fittings suitable for accommodating
fiber optic cable”) bear to fiber cabling.
Similarly, as seen in applicant’s brochure, the phrase
“Blade-Ready Solutions” appears above a paragraph explaining
that applicant’s goods can be specifically designed to
accommodate the requirements of enterprise blade servers.
We must consider the applied-for term in relation to the
identified goods. We also assume that the average consumer

12 Registration No. 2988380 issued on the Supplemental Register
on August 23, 2005.

13 Registration No. 3030832 issued on the Supplemental Register
on December 13, 2005 with a disclaimer of the word “Cabling.”
Serial Nos. 78534217 and 78598147
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of these goods is knowledgeable about their use and
functioning. Applicant’s goods are rack enclosures and
components of computerized networks such as electronic
management equipment and peripherals such as power supplies,
distribution devices, networking and interface devices. Any
such component or device that is not “blade-ready” may well
not work in this specialized environment. On seeing this
term, the IT professional knows immediately that applicant’s
array of goods is designed for the special needs of the blade
server environment. Thus, the mark BLADE READY is merely
descriptive of applicant’s enumerated goods.
Applicant makes the argument that this term is at most
suggestive because the goods are not “solely” for immediate
use with blade servers. Of course, as noted above, a term
need not describe all of the purposes, functions,
characteristics or features of the goods to be merely
descriptive -- it is enough that the term describes one
significant function, attribute or property of the involved
goods. Gyulay, 3 USPQ2d at 1009. The fact that many of
these components may well work in LAN or SAN systems that do
not qualify as blade servers does not detract from the merely
descriptive nature of the mark. We agree with the Trademark
Examining Attorney that applicant’s own literature makes
Serial Nos. 78534217 and 78598147
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clear that at least one feature of its goods is that they are
available for use in connection with blade servers.
Applicant argues that there appears to be no critical
need for others in this industry to be able to use this
particular combination of terms, and that this further
corroborates applicant’s contention that the mark is not
merely descriptive.
However, the fact that applicant may be the first, and
perhaps currently the only, user of a descriptive designation
does not justify registration if the only significance
conveyed by the term is merely descriptive. See In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983) [SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND
CONFERENCE is descriptive for conducting and arranging trade
shows in hunting, shooting, and outdoor sports products
field]. Similarly, the failure of the Trademark Examining
Attorney to uncover third-party examples of the “blade-ready”
combination does not detract from the fact that these two
words when placed together will be perceived as merely
descriptive by those in the IT industry when used in
connection with applicant’s enumerated computer components.
Serial Nos. 78534217 and 78598147
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Decision: As to the refusal in application Serial No.
78598147 [BLADE READY], the refusal to register under Section
2(e)(1) of the Lanham Act is hereby affirmed. As to the
refusal in application Serial No. 78534217,
the refusal to register absent applicant’s
compliance with the Trademark Examining

Attorney’s requirement to disclaim the words “Blade Ready”
(on the ground that this phrase is merely descriptive in
connection with the identified goods), is also affirmed.14
Nonetheless, in accordance with Trademark Rule 2.142(g), this
decision will be set aside with respect only to application
Serial No. 78534217, and this application will be returned to
the Trademark Examining Attorney to place in condition for
publication for opposition, if applicant, no more than thirty

14 In its response of October 16, 2006, applicant suggested it
might be willing, in the alternative, to agree separately to
disclaimers of the words “Blade” and “Ready” apart from the mark as
shown. However, a disclaimer of individual components of a
descriptive term is improper when it should be disclaimed as a
composite. See In re Wanstrath, 7 USPQ2d 1412, 1413 (Comm’r Pats.
1987) [GLASS TECHNOLOGY is a unitary descriptive phrase as applied
to automobile windshield repair kits and must be disclaimed as a
composite, not as separate words); In re Medical Disposables Co.,
25 USPQ2d 1801 (TTAB 1992) [MEDICAL DISPOSABLES is a unitary
descriptive expression which must be disclaimed as a composite);
American Speech-Language-Hearing Association v. National Hearing
Aid Society, 224 USPQ 798, 804 n.3 (TTAB 1984) [CERTIFIED HEARING AID
AUDIOLOGIST “clearly is a unitary expression that should be
disclaimed in its entirety”); In re Surelock Mfg. Co., Inc., 125
USPQ 23 (TTAB 1960) [THE RED CUP for red-colored hydraulic wheel
cylinder brake cups must be disclaimed as a composite). In the
present case, the clear requirement is to disclaim the unitary
phrase “Blade Ready” apart from the mark as shown.
Serial Nos. 78534217 and 78598147
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days from the mailing date of this decision, submits an
appropriately worded disclaimer, namely:
No claim is made to the exclusive right to use
the words “Blade Ready” apart from the mark as
shown.

* * *