Excel Program Inventions

Trademark Trial and Appeal Board

Jul 30, 2008

No. 78784785 (T.T.A.B. Jul. 30, 2008)

Mailed: July 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Excel Program Inventions
________

Serial No. 78784785
_______

Excel Program Inventions, pro se.

Sally Shih, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Walters, Taylor and Mermelstein, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Excel Program Inventions, a sole proprietorship with
John Caine listed as the sole proprietor, has filed an
application to register the mark DATABASE ASSISTANT, in
standard character format, on the Principal Register for
goods identified as “Computer software for use in database
management and application maintenance” in Class 9.1

1 Serial No. 78784785, filed January 4, 2006, and alleging
October 1, 2005 as the date of first use of the mark anywhere and
in commerce.

THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 78784785
2
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1) on the ground that applicant’s mark
DATABASE ASSISTANT is merely descriptive of the function of
the identified goods.
When the refusal was made final, applicant filed a
request for reconsideration that was found unpersuasive.
Applicant subsequently filed an appeal. Both applicant and
the examining attorney have filed briefs. We affirm the
refusal to register.
Before discussing the merits of this case, we must
address a preliminary matter. The examining attorney
objects to entry into the record of third-party
registrations attached to applicant’s appeal brief. The
objection is based on the examining attorney’s contention
that these registrations were introduced for the first time
as attachments to applicant’s appeal brief. While the
examining attorney is correct that the record in any
application must be complete prior to the appeal,2 the
third-party registrations previously were submitted with
applicant’s responses to the examining attorney’s first and
final office actions. Consequently, they are already of

2 See Trademark Rule 2.142(d); 37 C.F.R. § 2.142(d).

Ser No. 78784785
3
record as part of the application file. Accordingly, the
examining attorney’s objection is overruled.3
Considering now the merits of this case, 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 services in
connection with which it is used, or intended to be used.
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 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, feature or property of the goods or
services. 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, and the possible

3 We add that applicant’s resubmission of the third-party
registrations, as well as other previously submitted evidence,
with its brief was unnecessary. See ITC Entertainment Group Ltd.
v. Nintendo of America Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998)
(submission of duplicative papers is a waste of time and
resources, and is a burden upon the Board).

Ser No. 78784785
4
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. In re Recovery, Inc., 196 USPQ 830 (TTAB 1977).
The examining attorney maintains that the proposed
mark DATABASE ASSISTANT is merely descriptive of
applicant’s software for use in database management and
application maintenance. The examining attorney
particularly argues:
The term DATABASE is merely descriptive
of the field of use as described by the
applicant in the identification of
goods. The term ASSISTANT is merely
descriptive of a function or use of the
software, namely, assisting in managing
the database.

***
The proposed mark, although it is made
up of two words, is a composition of
words that has only one meaning, in this
case, a merely descriptive meaning in
relation to the identified goods.

(Brief, pp. 2 and 7).
In support of the refusal, the examining attorney
submitted the following definitions of “database” and
“assistant.”4 Database is defined, in relevant part, as:
1. a large collection of information
arranged for quick retrieval, updating, or

4 The definitions are taken from the online version of Wordsmyth
found at www.wordsmyth.net/live/home.

Ser No. 78784785
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the like, esp. such a collection in a
computer.

Assistant is defined, in relevant part, as:

1 a person who gives help, aid, or
assistance.

Additionally, we take judicial notice of the following
definition of “assistant”:
NOUN: 2. Giving aid; auxiliary.5

The examining attorney also submitted results from a
search of Google search engine for the term “database
assistant” and excerpts from the websites www.markosoft.net;
www.bluechillies.com; and www.hotlib.com to show that the
term is used in connection with computer software such as
that of applicant.
Applicant contends that the examining attorney has
failed to provide any factual evidence to meet the burden
necessary to justify the refusal. Insofar as the Internet
evidence obtained is concerned, applicant argues that in
each instance the mark “DATABASE ASSISTANT” unambiguously
appears, it is the “complete NAME of the product and NOT
the description thereof,”6 and that the evidence is mainly

5 The American Heritage Dictionary of the English Language (4th
ed. 2000).

6 (Brief, unnumbered p. 2).

Ser No. 78784785
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comprised of multiple references to one product named
“Database Assistant” from a company called Markosoft. As
regards the dictionary definitions of the words “database”
and “assistant,” applicant, citing Concurrent Technologies
Inc. v. Concurrent Technologies Corp., 12 USPQ2d 1054, 1057
(TTAB 1989), argues that such evidence “is not proof of
‘descriptiveness’ in itself: … Common words may be
descriptive when standing alone, but when together in a
composite mark, they may become a valid trademark.” (Id.)
With regard to the examining attorney’s Internet
evidence, as applicant pointed out, the pertinent Internet
references refer to a single product apparently sold by
Markosoft Industries. The webpage from www.markosoft.net,
for example, states that “[t]he Markosoft Database
Assistant is an all-in one database access tool for use in
viewing and editing …. Additionally, the Database
Assistant provides a way to pre-configure all of the data
sources that you commonly use….” (Office Action issued
July 26, 2006, Attachment 3). This language, similar to
that used in the other two web pages of record, fails to
show the term “database assistant” unequivocally used
descriptively or as a trademark. Therefore, the probative
value of this evidence is limited, at best, in assessing
the consuming public’s perception of the term DATABASE
Ser No. 78784785
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ASSISTANT as describing applicant’s computer software for
use in database management and application maintenance.
Nonetheless, the record sufficiently demonstrates that
the designation DATABASE ASSISTANT immediately conveys the
function and/or purpose of applicant’s goods. The
dictionary definition submitted by the examining attorney
as well as applicant’s own use of the term “database” in
the identification of goods show that DATABASE directly
describes an attribute of applicant’s goods. Additionally,
as previously indicated, the term “assistant” means
“[g]iving aid.” Because applicant’s computer software
“aids” the user in database management and application
maintenance, the word “assistant” is merely descriptive of
applicant’s goods.
In view of the above, we find that the individual
terms DATABASE and ASSISTANT have descriptive significance
as used in connection with the identified goods.
When two or more merely descriptive terms are
combined, we must determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Ser No. 78784785
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Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER held merely
descriptive of commercial and industrial cooling towers).
We find that the record establishes that the
designation DATABASE ASSISTANT, as a whole, is descriptive
of the identified goods. When the mark DATABASE ASSISTANT
is viewed on or in connection with the goods listed in the
application, there is nothing in the mark which is
incongruous, nor is there anything which would require the
gathering of further information, in order for the merely
descriptive significance thereof to be readily apparent to
prospective purchasers of the goods. See, for example, In
re Abcor Development Corp., Inc., 588 F.2d 811, 200 USPQ
215 (CCPA) (Rich, J., concurring) [GASBADGE described as a
shortening of the name “gas monitoring badge”]; and Cummins
Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892,
149 USPQ 559 (CCPA 1966) [TUBODIESEL held generically
descriptive of engines having exhaust driven turbine super-
chargers]. That is, the combination of the words
“database” and “assistant” fail to create a new and
distinct commercial impression.
As evidenced by applicant’s specimens of record, which
include what appears to be an informational flyer, the
purchasing public would perceive the designation DATABASE
ASSISTANT as descriptive of applicant’s computer software
Ser No. 78784785
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used for database management and application maintenance.
The flyer reads, in relevant part, as follows:
Introducing a programming productivity aid
which dramatically reduces the time and
effort required to make changes to database
files and RPG applications on the iSeries
and AS/400….

***

Database AssistantTM

A Programmer Productivity Aid and Field Level
Database Relations Tool

When prospective consumers encounter the designation
DATABASE ASSISTANT in this context, it is clear that it
would immediately inform these consumers that applicant’s
software aids the user in database management and
application maintenance.
Lastly, applicant states that “[f]or probative value
please refer to Exhibit B and the associated attachments
therein (A to J) which show how similar marks have
routinely been granted registration by the PTO.” (Brief at
unnumbered p. 2).7 We note, however, in determining the
issue of descriptiveness, prior registrations are of little
value because each case must be determined on its own
facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d

7 Exhibit B includes copies of previously submitted third-party
registrations for marks that include the term “assistant” with
other matter for a variety of goods and services.
Ser No. 78784785
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1564 (Fed. Cir. 2001)(“Even if some prior registrations had
some characteristics similar to Nett Designs’ application
[LOAD LLAMA THE ULTIMATE BIKE RACK], the PTO’s allowance of
such prior registrations does not bind the Board or this
court”]; and In re Scholastic Testing Service, Inc., 196
USPQ 517 (TTAB 1977). We are constrained to decide this
appeal on the record before us.
We conclude that when applied to applicant’s goods,
the designation DATABASE ASSISTANT immediately describes,
without any kind of mental reasoning, the function of the
goods listed in the application, i.e., “computer software
for use in database management and application
maintenance.”

Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.

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