Best Software, Inc.

Trademark Trial and Appeal Board

Feb 27, 2001

No. 75457359 (T.T.A.B. Feb. 27, 2001)

2/27/01 Paper No. 14
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Best Software, Inc.
___________
Serial No. 75/457,359
___________
Marsha G. Gentner and Leesa N. Weiss of Jacobson, Price,
Holman & Stern for applicant.
Sandy R. Switzer, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
____________
Before Walters, Wendel and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Best Software, Inc. has filed a trademark application
to register the mark BUDGET DIRECTOR for “computer software
for use in accounting, financial management and planning,
and budget forecast and analysis.”1 The application
includes a disclaimer of BUDGET apart from the mark as a
whole.
The Trademark Examining Attorney has issued a final
refusal of registration, under Section 2(e)(1) of the

1 Serial No. 75/457,359, in International Class 9, filed March 26, 1998,
based on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/457,359
2
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive of its goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The Examining Attorney contends that the proposed mark
is merely descriptive in connection with the identified
software because it “describes the intended users of the
applicant’s software.” She states that the term “budget
director” is a “recognized position in the business
management field,” identifying “a person within an
organization charged with accounting, financial management,
and budget planning duties.” In support of her position,
the Examining Attorney submitted dictionary definitions of
“budget” as “an itemized summary of estimated or intended
expenditures for a given period along with proposals for
financing them” and of “director” as “one who supervises,
controls, or manages”; and excerpts of articles from the
LEXIS/NEXIS database that demonstrate use of the term
“budget director.”
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is used, or intended to be used.
Serial No. 75/457,359
3
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986);
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). Further, it is well-established
that the determination of mere descriptiveness must be made
not in the abstract or on the basis of guesswork, but in
relation to the goods or services for which registration is
sought, the context in which the mark is used, and the
impact that it is likely to make on the average purchaser of
such goods or services. In re Recovery, 196 USPQ 830 (TTAB
1977).
It is clear from a review of the specimen of record, a
brochure advertising applicant’s software, that applicant’s
product is intended to integrate and streamline the process
“of putting together a budget.” According to the brochure,
the BUDGET DIRECTOR software allows an organization’s
“budget administrator” to “always know the status of each
part of the budget”; and the program “includes tools to set
up your budget process, distribute and collect input,
analyze your business projections, and perform what-if
analyses."
Serial No. 75/457,359
4
The LEXIS/NEXIS excerpts clearly establish that “budget
director” is a term that appears frequently in articles and
that it is a title referring to a person who manages an
organization’s budget department or office. As applicant
notes, the vast majority of the articles refer to government
budget directors. However, even if it is mostly government
organizations that have a position entitled “budget
director,” because applicant’s identification of goods does
not limit its class of purchasers to private organizations
and, thus, encompasses government budget offices,
applicant’s argument in this regard is irrelevant.
Nonetheless, the Examining Attorney has not established
that “budget directors” are either the only, or a
significant portion of the intended class of purchasers for
applicant’s goods. The only evidence regarding the intended
class of purchasers is the brochure submitted as a specimen.
From this, we can conclude only that the intended purchasers
encompass any business entity that prepares a budget.
The Examining Attorney has established that the term
“budget” is merely descriptive, if not generic, in
connection with the identified goods, and a disclaimer of
that term is of record. However, we find the term “budget
director” to be a double entendre because, while the term is
commonly understood to identify a “person,” when it is
considered in connection with these goods, the term suggests
Serial No. 75/457,359
5
that this software can be useful in setting the direction of
an organization’s budget through, among other features, the
integration of strategy with actual “number crunching.”
This analysis requires too many steps for us to consider the
mark to be merely descriptive.2
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.

2 We note that we do not consider as persuasive applicant’s arguments
that none of the referenced LEXIS/NEXIS articles reference computer
software or programs used by “budget directors,” or that the third-party
registrations of marks that include the term “director” for a variety of
goods and services. The fact that the term may have broad applicability
is not relevant to this case where we must consider the mark in
connection with the identified goods.