DataMirror Corp.

Trademark Trial and Appeal Board

Feb 12, 2004

No. 75203278 (T.T.A.B. Feb. 12, 2004)

Mailed: 12 FEB 2004
Paper No. 18
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DataMirror Corporation
________
Serial No. 75203278
_______
John R. Garber of Cooper & Dunham LLP for DataMirror
Corporation.
Tracy L. Fletcher, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Quinn, Bucher, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 25, 1996, DataMirror Corporation
(applicant) applied to register the mark TRANSFORMATION
SERVER, in typed form, on the Principal Register for goods
ultimately identified as “computer software for use in
extraction, filtering, reformatting and replication of data
between the compatible and incompatible database software
and computer platforms” in International Class 9.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75203278
2
The application (Serial No. 75203278) is based on an
allegation of a bona fide intention to use the mark in
commerce and the ownership of a foreign application
(Canadian Application No. 826,5081). In a paper dated
August 11, 1998, applicant disclaimed the term “server.”
The examining attorney2 refused to register applicant’s
mark on the ground that the mark was merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), of a feature of applicant’s goods. The
examining attorney argues that “data transformation may be
accomplished by the extraction, filtering, reformatting and
replication of data in order to overcome compatibility
issues between database software and/or computer
platforms.” Brief at 5. Inasmuch as the examining
attorney found that the software was used with or comprises
a server for data transformation, the mark was merely
descriptive of applicant’s software. Applicant, on the
other hand, submits that its mark is suggestive because it
1 Subsequently, applicant provided a copy of Canadian
Registration No. 512,413, filed October 21, 1996 and issued on
May 28, 1999.
2 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 75203278
3
“requires thought, perception and imagination to make such
a connection.” Brief at 5.3
After the examining attorney made the refusal final,
applicant appealed to this Board.4
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. Gyulay, 3
USPQ2d at 1009; Meehanite Metal Corp. v. International
Nickel Co., 262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
Descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
3 Applicant’s Brief (pp. 3-4) begins with a section entitled “No
explanation was ever given as to why the mark TRANSFORMATION
SERVER was withdrawn from publication.” To the extent that
applicant is dissatisfied with this decision of the Deputy
Commissioner, it is not a matter that is appealable to this
Board. 37 CFR § 2.146; TBMP § 1201.05(b). We note that the
examining attorney requested the Deputy Commissioner to restore
jurisdiction “for action in accordance with the attached Office
action.” This Office action informed applicant of the Deputy
Commissioner’s decision to restore jurisdiction and it attached
more than sixty pages of evidence.
4 With its Reply Brief, applicant attached a brochure of
applicant describing its products. This submission is manifestly
untimely and we will not consider it. TBMP § 1203.02(e).
Ser. No. 75203278
4
services for which registration is sought. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
The examining attorney relies on the following
evidence to show that applicant’s mark is descriptive.
First, the examining attorney requests that we take
judicial notice of the following definitions, which we do5:
Transformation – 1. a. The act or an instance of
transforming. b. The state of being transformed… 3.
Mathematics. a. Replacement of the variables in an
algebraic expression by their values in terms of
another set of variables. b. A mapping of one space
onto another or onto itself.
Server – Computer Science. A computer or program that
controls a central repository of data that can be
downloaded or manipulated by a client.6
Even more significant than these dictionary
definitions are the numerous uses of the words
“transformation” and “server” from the Internet or
electronic databases that the examining attorney has
submitted.
Functioning as a color transformation server, it can
process rgb scans, Photo CD files, color Illustrator
and FreeHand files.
ASAP, September 1, 1993.
Any of these can be overcome with custom programming
or connection to third-party products, but, out of the
box, eXcelon should be viewed as a transformation
server.
5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
6 American Heritage Dictionary of the English Language (3rd ed.
1992).
Ser. No. 75203278
5
ASAP, November 1, 1999.
The DMC data warehouse transformation server, a
NetFRAME NT Server by MicronElectronics, receives data
from an RS/6000 that acts as the interface server.
DM Review, September 1999.
The product also uses a transformation server, and can
be customized with Microsoft’s Visual Basic for
Applications technology.
InfoWorld Daily News, May 24, 1999.
[O]rganizations will have to use application servers
such as Netscape Application Server or data
transformation servers such as Constellar Corp.’s
Constellar Hub for easy access to this data.
ASAP, January 25, 1999.
The suite consists of client tools, plus a data
transformation server that integrates through the
metadata repository.
Database Web Advisor, May 1997.
A document would be sent initially to an
“import/export” server, which would enlist the
assistance of a representation transformation server”
[sic] if the document was not in a standard format
ready for storage.
ASAP, September 1990.
Another analyst, Bill Redman of GartnerGroup, Inc.,
also thinks transformation servers will be
particularly hot.
ASAP, January 1, 2001.
The integration of the database and OWB allows
Oracle8i to act as a transformation server, so that an
additional transformation server is not needed.
ASAP, April 26, 2000.
To complement VorteXML Designer, Datawatch will
release VorteXML Server, a high performance server
engine that automates data transformation into XML,
later this year.
ASAP, October 1, 2002.
Ser. No. 75203278
6
The product, comprised of the Contivo EIM Server and
Contivo Analyst, is designed to automate data
transformation that takes place during application
integration.
InfoWorld Daily News, June 17, 2002.
That means REBOL can act as an intermediate Web
server, loading in data (like XML files) and
performing localized transformations on the data
before sending it on to the browser.
new.architect, April 1, 2002.
Studdard, who has used Microsoft’s BizTalk Server, an
XML transformation engine, to support a collection of
.Net applications, has been tweaking the server with
his own code.
Network World, July 29, 2002.
But the bulky transformations were bogging down
servers.
Network World, September 23, 2002.
Servers can be cascaded to create a highly scalable
real-time content transformation.
www.mobilewebsurf.com
San Mateo, Calif.-based AvantGo is another player in
the transformation server arena.
Electronic News Online, January 1, 2001.
The examining attorney also included an extract from
The Rational Edge website entitled “From Craft to Science:
Rules for Software Design” that contained the following
definition: “Transformation Server – Transformation
servers perform the transformation from input data to
output data, while possibly updating internal data.” The
flow chart in the article then shows how the transformation
server interacts with the I/O servers and the Data Flow
Manager.
Ser. No. 75203278
7
The evidence7 relating to applicant’s products shows
that this software does indeed transform data on or in
conjunction with servers.
DataMirror Transformation Server is an innovative
software solution that allows users to capture,
transform and flow data bi-directionally and in real-
time between DB2 UDB, Microsoft SQL Server…
DataMirror press release, November 7, 2002.
Transformation Server
DataMirror
Data Replication and transformation system enabling
enterprise data distribution over mixed databases
running on Windows NT, UNIX and AS/400
systems…Available for IBM AS/400 systems and Microsoft
SQL Server.
Enterprise.CNET.com.
DaataMirror®
Solutions for Data Replications & Transformation
***
This exciting part of our business provides solutions
for data replication and data transformation iSeries
and AS/400, but also for Windows NT-servers, UNIX, and
S/390!
www.sosy.dk.
7 We note that two of the articles below are from foreign
websites. However, both of these articles discuss applicant’s
products, not the use of a term in a foreign country. Also, the
Board has held that “it is reasonable to assume that
professionals in medicine, engineering, computers,
telecommunications and many other fields are likely to utilize
all available resources, regardless of country of origin or
medium. Further, the Internet is a resource that is widely
available to these same professionals and to the general public
in the United States. Particularly in the case before us,
involving sophisticated medical technology, it is reasonable to
consider a relevant article from an Internet web site, in
English, about medical research in another country, Great Britain
in this case, because that research is likely to be of interest
worldwide regardless of its country of origin.” In re Remacle,
66 USPQ2d 1222, 1224 n.5 (TTAB 2002)
Ser. No. 75203278
8
DataMirror Transformation Server software is a
flexible, high performance, peer-to-peer integration
solution that enables users to capture, transform and
flow data in real time throughout the enterprise and
across the Internet… Transformation Server provides
bi-directional data integration among DB2/UDB,
Microsoft SQL Server, Oracle and Sybase …
www.spacetec.co.uk.
Indeed, data transformation is advertised as a
significant feature of applicant’s software. Also,
articles about applicant’s products use the term
descriptively when they refer to applicant’s software.8
Therefore, the applicant’s term TRANSFORMATION SERVER is at
least merely descriptive of applicant’s computer software
for use in extraction, filtering, reformatting and
replication of data between the compatible and incompatible
database software and computer platforms.9
Regarding applicant’s arguments against the
descriptiveness of its mark, we cannot agree that all the
references to “transformation servers” refer “to very
specific technical terms.” Reply Brief at 2. For example,
the Rational Edge website defines transformation servers in
8 See Computer Reseller News, March 8, 1999 (“DataMirror, with
its experience in transformation servers and replication
services, is a logical player for that arena”).
9 Applicant argues generally that “[m]any, if not most, of the
cited articles referencing use of the mark TRANSFORMATION SERVER
are in fact referencing such use by Applicant.” Brief at 5-6.
While a few do, most of the articles are general in nature or
refer to other entities. These articles are normally in third-
party publications and the authors of those articles apparently
believed that the term “transformation server” was descriptive.
Ser. No. 75203278
9
the most general way (“Transformation Server –
Transformation servers perform the transformation from
input data to output data, while possibly updating internal
data”). Applicant’s arguments that “the use of the term
‘Transformation’ in the software industry was extremely
rare and virtually unheard of at the time applicant adopted
and began using its TRANSFORMATION SERVER trademark” and
that “Applicant achieved significant commercial success”
with its software are unsupported by the record. Applicant
has not submitted any evidence on these points. We also
note that there is no evidence of when applicant began
using its mark. The only “evidence” on this point is the
filing dates of this intent-to-use application and its
Canadian application. We note that at least two of the
references (ASAP, September 1, 1993 and ASAP, September
1990) precede even these dates.
When we analyze the evidence, 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. Abcor Dev., 200 USPQ at 218 (“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
Ser. No. 75203278
10
consideration of its mark ‘when applied to the goods’ as
required by statute”).
Based on this evidence, we conclude that the terms
“transformation” and “server” are at least descriptive
terms when applied to applicant’s computer software.
Applicant’s software, which extracts, filters, reformats
and replicates data, is transforming data and its software
would also comprise or be used with servers. The combined
term “transformation server” also is at least as
descriptive as the individual terms. There is ample
evidence that the combined term is used to describe
computer hardware or software that transforms data. When
we view the mark TRANSFORMATION SERVER in the context of
computer software for use in extraction, filtering,
reformatting and replication of data between the compatible
and incompatible database software and computer platforms,
the term will immediately inform prospective customers of
the fact that applicant’s software involves data
transformation with or comprising servers and, as such, it
would describe a significant characteristic of the goods.
Therefore, we find that applicant’s term is merely
descriptive of the goods identified in the application.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.