MacroLink, Inc.

Trademark Trial and Appeal Board

Aug 26, 1997

EX (T.T.A.B. Aug. 26, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 9/2/97
Paper No. 12
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MacroLink Inc.
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Serial No. 74/536,126
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Derrick Michael Reid for MacroLink Inc.
Peter Cataldo, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Acting Managing Attorney).
_______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 10, 1994, applicant filed an application to
register the mark shown below

on the Principal Register for "Computer SCSI Bus
disconnecting electronic circuits," in Class 9. A claim of
use in interstate commerce since October 15, 1993 was the
basis for the application.
Ser No. 74/536,126
2
In addition to noting several other informalities, the
Examining Attorney required applicant, under Section 6 of
the Act, to disclaim the term "SCSI DISCONNECT" apart from
the mark as shown. This requirement was based on his
determination that the term is merely descriptive of
applicant's goods within the meaning of Section 2(e)(1) of
the Act.
Applicant responded with separate disclaimers of the
letters "SCSI" and the word "DISCONNECT," but did not
disclaim them together, as a unitary term, as the Examining
Attorney had required. Although the Examining Attorney had
not objected to the manner in which the goods were
identified in the original application, applicant also
amended the identification-of-goods clause "to remove
ambiguity and more precisely indicate the nature of the
goods." Applicant changed the way its product was
identified to "Computer SCSI Bus In-Line electronic circuits
for electrically isolating SCSI Bus electrical signals."
Applicant argued that separate disclaimers are appropriate
because the combination of "SCSI" and "DISCONNECT" is not
merely descriptive of applicant's product, as specified in
the amended identification of the goods.
The Examining Attorney allowed the amendment to the way
the goods were set forth, agreeing with applicant that the
amendment represents a narrowing of the goods as they were
identified in the application as it was originally filed,
but he was not persuaded by applicant's argument with
Ser No. 74/536,126
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respect to the requirement to disclaim "SCSI DISCONNECT" as
a unitary term. The requirement was accordingly made final.
Attached to the final refusal were copies of excerpts
from thirty-two stories retrieved from the Nexis database of
publications. Some of the excerpts show the term used as a
unitary expression in connection with computers. Typical
examples include the following: "...performance features
like SCSI disconnect and tagged command queues maximize
overall data throughput..."; "Version 4.3 brings two major
new capabilities to Mac SCSI: asynchronous I/O and SCSI
disconnect-reconnect."; "The Fast SCSI-2 card implements the
SCSI disconnect/reconnect;" and "In addition, a new SCSI
disconnect/reconnect feature permits connection of a host
device to a host computer via a SCSI bus with automatic
disconnection..." Another article notes that "one
particularly valuable feature of the SCSI is its
disconnect/reconnect capability."
Applicant responded to the final refusal with
additional argument, and attached to its response a copy of
part of the SCSI bus specification from the draft American
National Standard for the Computer and Business Equipment
Manufacturers Association. This specification uses the
terms "SCSI bus" and "DISCONNECT," but does not combine the
two, e.g., "After the target has received the READ command
(and has determined that there will be a delay), it
disconnects from the SCSI bus by sending a DISCONNECT
message and by going to the BUS FREE phase."
Ser No. 74/536,126
4
Applicant appealed and filed a brief, but did not
request an oral hearing of the appeal. The Examining
Attorney also filed a brief, attaching to it copies of
excerpts from Microsoft Press Computer Dictionary, Second
Edition (1994). The excerpted definitions show that the
letters "SCSI" form an acronym for small computer system
interface, which is a standard high-speed parallel interface
defined by the X3T9.2 committee of the American National
Standards Institute. The interface is apparently "used for
connecting microcomputers to peripheral devices, such as
hard disks and printers, and to other computers and local
area networks." The same dictionary defines a "bus" as "a
set of hardware lines--wires--used for data transfer among
the components of a computer system." 1
Section 6(a) of the Act permits the Examining Attorney
to require an applicant to disclaim an unregistrable
component of a mark which is otherwise registrable. Section
2(e)(1) states that a term is unregistrable if it is merely
descriptive of the goods on which it is used.
A disclaimer of only the individual component words of
a complete descriptive phrase is improper. In re Wanstrath,
7 USPQ2d 1412 (Comm'r Pats 1988); In re Medical Disposables
Co., 25 USPQ2d 1801 (TTAB 1992).

1The Board may take judicial notice of these dictionary
definitions. See B.V.D. Licensing Corp. v. Body Action Design
Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988).
Ser No. 74/536,126
5
The issue in this appeal is therefore whether "SCSI
DISCONNECT" is merely descriptive of "Computer SCSI Bus In-
Line electronic circuits for electrically isolating SCSI
electrical signals." Based on the record before us in this
case, we hold that it is, and therefore that the unitary
term must be disclaimed.
The test for mere descriptiveness is not in dispute. A
term is merely descriptive of the goods with which it is
used if it immediately and forthwith conveys information
about the nature of the goods, their characteristics,
features or functions. In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991); In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978).
The Examining Attorney contends that the term in
question is merely descriptive of the goods set forth in the
application because "SCSI DISCONNECT" describes products
which disconnect small computer system interfaces, and that
is what applicant's circuits do. He points to the above-
referenced definitions as establishing that applicant's
goods are used to disconnect SCSI lines or wires, and argues
that the articles he made of record with the final refusal
demonstrate that the unitary term is recognized in the
computer field and that the capacity of an SCSI bus to
disconnect is a key feature or characteristic for such
goods.
Applicant explains that its in-line bus isolation
circuits do not physically disconnect or unplug an SCSI bus
Ser No. 74/536,126
6
from a system, but rather simply "isolate" the bus
electronically, thereby allowing it to be physically
disconnected or unplugged by hand without interrupting or
otherwise adversely affecting concurrent contemporaneous
communications among the SCSI type devices connected to
another bus. Applicant argues that its goods do not
physically disconnect the SCSI bus, but rather that its bus
"isolation" circuits only "enable physical manual
disconnection or reconnection without damage or failure on
the SCSI bus." (applicant's Jan. 23, 1995 response, p.3).
We agree with the Examining Attorney that in resolving
the issue before us, it makes no difference whether the
disconnection is physical, in the sense that the bus is
manually disconnected, or whether the disconnection is only
electrical, in the sense that the bus is electrically
"isolated" or taken off the circuit from the rest of the
system. As the Examining Attorney points out, the reason he
allowed the amendment from "...bus disconnecting electronic
circuits" to "...electronic circuits for electrically
isolating SCSI bus electrical signals" is because the
amended version falls within the broader scope of the
original identification, that is, the amended identification
"narrows the original to specify electrical disconnection to
the exclusion of physical disconnection." (brief, p. 4).
Simply put, "SCSI DISCONNECT" merely describes
electronic circuits which are used to disconnect
electrically the SCSI bus. That they are left physically
Ser No. 74/536,126
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attached does not alter this fact, and does not make the
unitary term "SCSI DISCONNECT" any less descriptive of
applicant's goods.
Applicant's brief admits as much. At p. 17, applicant
concedes, apparently in view of its "duty of good faith
candor," that "it may well be asserted that the isolation
function of applicant's goods effectively 'disconnects' one
bus portion from another by preventing all signals from
propagating through the in-line isolation device. The term
'disconnect' is generally defined as 'to sever a
connection,' and the isolation function does prevent devices
from communicating with each other, and in one sense, severs
a connection." A clearer explanation of why "SCSI
DISCONNECT" is merely descriptive of these products would he
difficult to make.
This descriptive term must be disclaimed apart from the
mark as shown. Accordingly, the requirement for a
disclaimer of "SCSI DISCONNECT" is affirmed. The refusal to
register will be set aside, however, if within thirty days
of the mailing date of the ruling, applicant submits the
required disclaimer. In that event, the application will be
reopened
Ser No. 74/536,126
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in accordance with Trademark Rule 2.142(g) for the entry of
the disclaimer, and then it will be forwarded to publication
under Section 12 of the Act.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark Judges
Trademark Trial & Appeal Board
Ser No. 74/536,126
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