Concurrent Tech-nologies Corp.

Trademark Trial and Appeal Board

Apr 26, 2001

No. 75538498 (T.T.A.B. Apr. 26, 2001)

4/26/01
Paper No. 2o
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Concurrent Technologies Corp.
________
Serial No. 75/538,498
_______
Mark J. Young of Draughon Professional Association for
Concurrent Technologies Corp.
Gerald T. Glynn, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Cissel, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 18, 1998, applicant filed the above-
referenced application to register the mark “VIRTUALCAST”
for “computer software for simulating metal forming
processes,” in Class 9. The application was based on
applicant’s assertion that it possessed a bona fide intent
to use the mark in commerce in connection with these goods.
The Examining Attorney refused registration under
Section 2(e)(1) the Lanham Act, 15 U.S.C. 1052(e)(1), on
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/538,498
2
the ground that the mark sought to be registered is merely
descriptive of the goods identified in the application. He
contended that the mark “merely describes the virtual
reality feature of this specialized software which allows
simulating metal casting operations.” In support of the
refusal to register, he submitted copies of two third-party
registrations of marks for computer software on the
Principal Register wherein the word “virtual” has been
disclaimed, and one third-party registration on the
Principal Register with a disclaimer of the word “cast.”
The goods in that registration include metal castings.
Applicant responded to the refusal to register by
amending the identification of goods in the application to
“computer software for simulating metal forming processes,
namely, comprehensive mold filling and solidification
simulation, with advanced user interfaces allowing users to
define specific properties, store information and utilize
visualization tools,” in Class 9. Applicant argued that
the mark is not merely descriptive of these goods, which
are software which “has nothing whatsoever to do with
virtual reality.” Thus, argued applicant, “the term
‘virtual’ as used in applicant’s mark is a suggestive term,
not a descriptive one.” Citing thirty-one dictionary
definitions of the word “cast,” including “to form into a
Ser No. 75/538,498
3
particular shape by pouring into a mold,” applicant argued
that because the word “cast” has so many meanings, it does
not describe applicant’s goods with any degree of
particularity. Based on this, applicant took the position
that its mark is suggestive, rather than descriptive, as
applied to its goods.
The Examining Attorney was not persuaded by
applicant’s arguments, however, and in the second Office
Action, he made final the refusal to register under Section
2(e)(1). Submitted with the final refusal was an excerpt
from a published article about the “Cast Metal Coalition,”
a group of metal-casting technical societies which promotes
research and development in that industry. Also submitted
was an excerpt from a computer glossary wherein the term
“virtual” is defined as “an adjective applied to almost
anything today that expresses a condition without
boundaries or constraints.” In the same glossary, the term
“casting” is defined as a term used in programming to
designate “the conversion of one data type into another.”
Also attached were copies of three other third-party
registrations. Two of these registrations are on the
Principal Register with disclaimers of the word “virtual.”
The third mark also includes the word “virtual,” but that
registration is on the Supplemental Register.
Ser No. 75/538,498
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Applicant timely filed a notice of appeal, which was
accompanied by a request for reconsideration.
The request for reconsideration argued that when
properly considered as a unitary composite mark,
“VIRTUALCAST” is suggestive, rather than merely
descriptive, of the goods identified in the application.
Applicant further argued that even if the mark is broken
down into its component terms, it is nonetheless only
suggestive in connection with these goods. Applicant
submitted copies of thirty-two third-party registrations
for marks which incorporate the word “virtual” without any
disclaimer or claim of acquired distinctiveness, and fifty-
three third-party registrations for marks wherein “virtual”
is the sole undisclaimed component of marks with two or
more components. Applicant argued that this evidence
establishes the past practice in the Patent and Trademark
Office of registering on the Principal Register marks
combining “virtual” with descriptive terminology.
The Examining Attorney considered applicant’s
arguments and evidence, but maintained the refusal to
register. Submitted with the Office Action maintaining the
refusal were excerpts apparently retrieved from an
automated database. Although several show the term
“virtual cast” in the context of unrelated fields such as
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orthopedic medicine, fossils or paleontology, two clearly
relate to metal forming processes involving molds. One
states that “VCF computer model (Virtual Casting Furnace)
has been used to optimize the casting conditions. A
variety of material quality criteria are determined by
computer simulation. Based on the simulations, a concept
for an online process control is presented. The goal of
this concept is to develop strategies that minimize
deviations from the optimal process control by the use of
computer simulation during the casting process.” The
second apparently comes from a paper presented in 1996 to a
conference of photovoltaic specialists. The title of the
paper appears to be “Virtual casting – a dream come true or
an expensive nightmare?” The abstract of the text is as
follows: “In this modern high technology age of virtual
reality ‘desk top’ or ‘virtual’ casting has become the
dream of the foundry engineer… This article attempts to
give an objective view of the application of casting
simulation software and highlights the positive aspects and
the pitfalls.”
The Examining Attorney argued that these excerpts show
that “virtual casting” is a term used to identify computer
simulated metal forming processing such as casting molten
metal into molds, and that in view of this fact, the term
Ser No. 75/538,498
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applicant seeks to register, “VIRTUALCAST,” if used in
connection with “computer software for simulating metal
forming processes, namely, comprehensive mold filling and
solidification simulation,” would immediately and forthwith
convey significant information about the goods, i.e., that
the purpose or function of the software is computer
simulation of the casting process.
Both applicant and the Examining Attorney filed appeal
briefs, and applicant requested an oral hearing before the
Board. Some confusion arose regarding the scheduling of
the hearing, however, and applicant did not appear for the
scheduled hearing on October 12, 2000. Applicant
subsequently withdrew its request for a hearing, choosing
to rely on its brief.
The sole issue before the Board in this appeal is
whether the mark “VIRTUALCAST” is merely descriptive within
the meaning of Section 2(e)(1) of the Act in connection
with the computer software for simulating metal forming
processes identified in the application. We find that it
is, so the refusal to register on this basis is well taken.
A term is considered to be merely descriptive of goods
within the meaning of section 2(e)(1) Trademark Act if it
immediately and forthwith conveys information concerning a
significant quality, characteristic, feature, function,
Ser No. 75/538,498
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purpose or use of the goods. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not
necessary that a term describe all of the properties or
functions of the goods in order for it to be considered
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute or feature of them.
Moreover, whether a term is merely descriptive is
determined not in the abstract, but rather in relation to
the goods for which registration is sought, the context in
which it is or will be used on or in connection with those
goods, and the possible significance that the term would
have to the average purchaser of the goods because of the
manner of its use. In re Bright-Crest Ltd., 204 USPQ 591
(TTAB 1979). Whether consumers could guess what the
product is from consideration of the mark alone is not the
test. In re American Greetings Corp., 226 USPQ 635 (TTAB
1985). That particular words have other meanings in other
contexts is irrelevant. The issue is whether purchasers of
the particular goods in question would understand the mark
to convey information about a significant aspect of such
products.
On the other hand, a mark is only suggestive, and
hence registrable, if, when the goods bearing the mark are
encountered, a multi-stage reasoning process, or the
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utilization of imagination, thought or perception, is
required in order to determine what attributes of the goods
the mark conveys. See: Abcor Development Corp., supra, at
218, and In re Mayer-Beaton Corp., 223 USPQ 1347, 1349
(TTAB 1984). As has often been stated, there is a thin
line of demarcation between a suggestive mark and a merely
descriptive one, with the determination of which category a
mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. In re
Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of
the Americas, 200 USPQ 57 (TTAB 1978).
In the instant case, the term sought to be registered
is merely descriptive of the goods with which applicant
intends to use it because if prospective purchasers of
applicant’s software for simulating metal forming processes
were to encounter the mark “VIRTUALCAST” in connection with
these goods, they would immediately understand the mark to
identify the purpose or function of the goods, namely, that
applicant’s software enables users to conduct virtual
casting, i.e., computer simulation of the casting process,
in order to obtain the best results.
This case is very similar to the one recently decided
by this Board in In re Styleclick.com Inc., ___ USPQ2d ___
(TTAB 2001). In that case, the mark “VIRTUAL FASHION” was
Ser No. 75/538,498
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held to be merely descriptive of “computer software for
consumer use in shopping via the global computer network
featuring apparel, fashion, accessories, personal care
items, jewelry and cosmetics.” Judicial notice was taken
of dictionary definitions of the term “virtual” as follows:
“not physical. Exists in software only or the imagination
of the machine.” Net.speak-the internet dictionary (1994);
“used generally to describe something without a physical
presence or is not what it appears to be. Virtual reality,
for example, is made up of computer-generated images and
sounds rather than actual objects.” The Computing
Dictionary (1996); and “conceptual rather than actual, but
possessing the essential characteristics of a real
function.” The Illustrated Dictionary of Microcomputers
(3rd ed. 1990). When these meanings of “virtual” were
considered in light of the meaning of “fashion” in
connection with the recited services in that case, we found
that the use of “VIRTUAL FASHION” in connection with that
applicant’s services would immediately describe, without
conjecture or speculation, a significant feature or
characteristic of the services, namely that they involve,
inter alia, using a computer to shop for fashions in a
virtual sense, i.e., with the enhancements offered by
virtual reality.
Ser No. 75/538,498
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When the same meanings are attributed to the term
“virtual” in the instant case, and those connotations are
combined with the plain descriptive meaning of the word
“cast” in connection with metal casting1, it is clear that
the mark “VIRTUALCAST” identifies the purpose or use of
applicant’s software, which applicant admits provides
computer simulation of this metal forming process.
We have reviewed all the third-party registrations
made of record by both applicant and the Examining
Attorney. Just as in the “VIRTUAL FASHION” case, supra,
such third-party registrations are of little help in
determining the merits of this appeal. As we stated in our
opinion in that case, while uniform treatment under the
Lanham Act is an administrative goal, the task of this
Board is to determine, based on the record before us,
whether applicant’s mark is merely descriptive. Each case
must be decided on its own merits. We are not privy to the
records in the files of the cited registrations, but in any
event, the determination of the registrability of one
particular mark by an Examining Attorney is not
determinative in a case before the Board involving another,
1 “Casting” is merely another way of identifying the process
described in the application as the metal forming process of
“comprehensive mold filling and solidification.”
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different mark for different products or services. In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001). While it appears that the Office may not have
been consistent with respect to the registrability of marks
similar to applicant’s mark, our language and the
commercial use of it is always changing, and our job is to
try to resolve appeals based on contemporary common usage
of words. When we do this in the case at hand, we must
conclude that “virtual,” in the context of applicant’s
mark, has a generally recognized meaning with respect to
computers and software. When this non-source-identifying
prefix is coupled with the descriptive word “cast” in
applicant’s mark, the combination, “VIRTUALCAST,”
considered in its entirety, is merely descriptive of the
computer software identified in the application.
The fact that applicant has combined these two
descriptive words without leaving a space between them does
not alter the descriptive significance of the combination
of them, nor does the fact that applicant may be the first
or the only entity using this combination in connection
with such software render the term any less descriptive.
In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998).
As computer technology continues to evolve,
descriptive terms incorporating the word “virtual” are
Ser No. 75/538,498
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certain to multiply. Such terms must remain available for
competitors to use in connection with their own products.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
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