MicroStrategy Inc.

Trademark Trial and Appeal Board

May 18, 2001

No. 75451045 (T.T.A.B. May. 18, 2001)

Paper No. 11
5/18/01 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MicroStrategy Incorporated
________
Serial No. 75/451,045
_______
Michael J. Bevilacqua and Barbara A. Barakat of Hale and
Dorr LLP for MicroStrategy Incorporated.
Robin S. Chosid, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______
Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On March 16, 1998, MicroStrategy Incorporated filed an
application, based on Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b), to register the mark DSS BROADCASTER on
the Principal Register for the following goods, as amended:
“computer software for on-line analytical processing and
data analysis, namely, processing and analyzing data for
the purpose of delivering customized and personalized
information to targeted recipients” in International Class
9. Applicant filed, on October 6, 1998, an amendment to
allege use (which was accepted by the Office), asserting
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/451045
2
dates of first use and first use in commerce of August 11,
1998.
The Examining Attorney refused registration on the
ground that the term DSS BROADCASTER, when applied to the
identified goods, is merely descriptive of the goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). The Examining Attorney also required a
disclaimer of “DSS.”
When both the refusal and the disclaimer requirement
were made final, applicant appealed to this Board. Both
applicant and the Examining Attorney have filed briefs, but
an oral hearing was not requested.
Preliminarily, we note that the Examining Attorney who
wrote the brief on appeal withdrew the requirement for a
disclaimer (brief, footnote 3, p. 3). Thus, the only issue
before the Board is whether applicant’s mark is merely
descriptive under Section 2(e)(1) of the Trademark Act.
The Examining Attorney contends that the term DSS
BROADCASTER is merely descriptive of a central feature of
applicant’s computer programs, specifically disseminating
or broadcasting information; that “DSS” means “decision
support system” and “broadcast” means “to disseminate
information to several recipients simultaneously”; and that
Ser. No. 75/451045
3
the combination of “DSS” and “BROADCASTER” does not create
a separate, non-descriptive term.
In support of her position, the Examining Attorney
submitted the dictionary definition of “broadcast” set
forth above, as well as the following definition of “DSS,”
both from The Computer Glossary: The Complete Illustrated
Dictionary (Seventh Edition 1995):
“1. (Decision Support System) An
information and planning system that
provides the ability to interrogate
computers on an ad hoc basis, analyze
information and predict the impact of
decisions before they are made.
DBMSs let you select data and
derive information for reporting and
analysis. Spreadsheets and modeling
programs provide both analysis and
‘what if?’ planning. However, any
single application that supports
decision making is not a DSS. A DSS is
a cohesive and integrated set of
programs that share data and
information. A DSS might also retrieve
industry data from external sources
that can be compared and used for
historical and statistical purposes.
An integrated DSS directly impacts
management’s decision-making process
and can be a very cost-beneficial
computer application. See EIS.
2. (Digital Signature Standard) A
National Security Administration
standard for authenticating an
electronic message. See RSA and
digital signature.”
The Examining Attorney also submitted 27 excerpted
stories as representative of the 153 stories found in the
Ser. No. 75/451045
4
Nexis database “in which information about the applicant’s
goods appeared.” (First Office action dated February 22,
1999, p. 2). Some examples thereof follow (emphasis
added):
Headline: Braced to best Microsoft,
others, MicroStrategy helps firms
navigate data
A new product, DSS Broadcaster, will
distribute information more cheaply to
the mass business market via wireless
pagers, pagers, fax machines and
other..., “USA Today,” February 17,
1999;
Headline: MicroStrategy helps Lexis-
Nexis better serve its customers
...Lexis-Nexis is currently evaluating
MicroStrategy’s DSS Broadcaster, the
industry’s first Information Broadcast
Server, so that pertinent customer
information can be distributed to
several output devices, including,...
MicroStrategy, DSS Suite, DSS Agent,
DSS Web, and DSS Broadcaster are either
trademarks or registered trademarks of
MicroStrategy Incorporated in the
United States and certain other
countries...., “M2 Presswire,” January
21, 1999;
Headline: MicroStrategy DSS Broadcaster
wins The Data Warehouse Institute’s
Pioneering Products Shoot-Out
...Innovative New Product Set to
Redefine E-Business Market.
MicroStrategy demonstrated DSS
Broadcaster’s innovative ability to
deliver personalized broadcasts,
complete with sophisticated analyses
derived from a relational database, to
several output devices including email,
pager, and mobile phone. DSS
Broadcaster alerts users to important
Ser. No. 75/451045
5
business events via existing and
emerging communication channels, only
notifying users when pre-determined
business conditions are met. With
timely receipt of useful information,
DSS Broadcaster enables users at the
departmental, enterprise, supply chain,
and even consumer levels to make better
decisions. Any company that uses DSS
Broadcaster can transform itself into
an e-business....,“M2 Presswire,”
November 10, 1998;
Headline: MicroStrategy named a premier
member of IBM’s Solution Developer
Program
MicroStrategy’s latest product, DSS
Broadcaster, helps businesses maximize
their investments in data warehouses
and communication devises, such as
email, fax, pager and mobile phone. As
the industry’s first Information
Broadcast Server, DSS Broadcaster
delivers personalized analysis from
data warehouses to common business
media on a time or event triggered
basis. By delivering personalized
information from a DB2 Universal
Database data warehouse to users, DSS
Broadcaster helps organizations
leverage their IBM software and
hardware investments while extending
access to information throughout and
beyond the enterprise...., “M2
Presswire,” November 10, 1998; and
Headline: MicroStrategy announces
support for HP’s new HP 9000 V2500
enterprise server
... a member of HP’s Open Warehouse
alliance program, extended the reach of
the data warehouse even further by
delivering DSS Broadcaster, the
industry’s first Information Broadcast
Server that leverages established and
emerging communication channels to
extend access to information throughout
Ser. No. 75/451045
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the enterprise and beyond. Through the
delivery of e-broadcast servers via e-
mail, fax, pager and mobile phone, DSS
Broadcaster is enabling organizations
to target an entirely new group of
users to their data warehouses. The
applications require highly available
systems and ..., “With the introduction
of DSS Broadcaster, MicroStrategy
customers need the right infrastructure
to broadcast information throughout and
beyond large organizations. Our joint
customers will find that the ...,” “M2
Presswire,” December 9, 1998.
In addition, the Examining Attorney relies on
applicant’s uses of the terms “broadcast(s)” and
“broadcasting” appearing in applicant’s website. The
Examining Attorney contends that the website describes the
features of applicant’s product through uses such as the
following: “personalize the contents of broadcast messages
for each individual recipient,” and “satisfy specialized
requirements and customize each broadcast message.”
Applicant urges reversal on the basis that the
Examining Attorney improperly dissected the mark rather
than considering the mark as a whole in determining
descriptiveness; that there is nothing about the mark taken
as a whole which would enable potential purchasers to
immediately understand the precise nature or the intended
function of applicant’s goods; that the acronym “DSS”
refers to things other than “decision support system,” such
Ser. No. 75/451045
7
as “digital signature standard,” “digital satellite
system,” “data storage set” and “document storage system”1;
that the terms DSS (which can refer to different things)
and BROADCASTER (when taken in the normal meaning related
to “broadcast” as defined in the computer dictionary),
taken together, do not describe applicant’s product or its
function because “a decision support system is not
information and a decision support system is not
disseminated to several recipients” (applicant’s response,
July 19, 1999, p. 4); that the purchasing public will have
to use imagination, thought and perception to ascertain the
nature of applicant’s product (which “allow its purchasers
to disseminate information to others on an individualized
basis” (applicant’s response, July 19, 1999, p. 5); that
the mark is at most, suggestive, not merely descriptive, of
applicant’s product; and that all of the excerpted Nexis
stories submitted by the Examining Attorney were about
applicant’s involved product, and do not establish that the
1 Applicant referred in its brief (p. 5) to attached entries from
two different website resources, one glossary and one acronym
server, but there are no such attachments in the record.
However, we take judicial notice of the Acronyms, Intialisms &
Abbreviations Dictionary (28th ed. 2001), which includes all of
the meanings listed above as well as numerous others. See TBMP
§712.01.
Ser. No. 75/451045
8
term DSS BROADCASTER is merely descriptive of the involved
goods.2
The test for determining whether a mark is merely
descriptive is whether the mark forthwith conveys an
immediate idea concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978); and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). Moreover, the immediate idea must be conveyed with
a “degree of particularity.” In re TMS Corporation of the
Americas, 200 USPQ 57, 59 (TTAB 1978). See also, In re
Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d,
unpub’d, Fed. Cir. February 13, 1991. As the Court stated
in In re Abcor Development, supra: “Although a mark may be
generally descriptive, if it also functions as an
indication of origin, it is not ‘merely descriptive.’” See
2 Applicant also referred in its brief (pp. 6-7) to attached
copies of numerous third-party registrations wherein disclaimers
of “DSS” were not generally required by the USPTO. Again, these
attachments were not enclosed with the brief. However, the
photocopies of third-party registrations are not necessary to our
decision herein because the Examining Attorney has withdrawn the
requirement for a disclaimer of “DSS.”
We note that even if the photocopies of third-party
registrations had been attached to applicant’s brief, they would
be untimely filed under Trademark Rule 2.142(d), and the
Examining Attorney properly objected thereto (brief, footnote 6,
p. 5). Thus, the material would not have been considered by the
Board.
Ser. No. 75/451045
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also, In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205
USPQ2d 505 (CCPA 1980). Whereas, a mark is suggestive if
imagination, thought or perception is required to reach a
conclusion on the nature of the goods or services. See In
re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d 505
(CCPA 1980).
It is also 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 term or phrase is being used on or in connection
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
Viewing this record in its entirety, we find that the
Examining Attorney has not established a prima facie
showing that the mark DSS BROADCASTER, taken as a whole, is
merely descriptive of applicant’s “computer software for
on-line analytical processing and data analysis, namely,
processing and analyzing data for the purpose of delivering
customized and personalized information to targeted
recipients.” While it is true that DSS is an acronym for
“decision support system” (as well as being an acronym for
Ser. No. 75/451045
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several other things), and that meaning may be the most
relevant to applicant’s involved goods, nonetheless, the
Examining Attorney has not established how the acronym DSS
coupled with the word BROADCASTER immediately and forthwith
conveys descriptive information about a significant feature
of applicant’s involved goods.
Applicant’s use in its website of the general terms
“broadcast(s)” or “broadcasting” does not establish that
DSS BROADCASTER is merely descriptive of the involved
computer software. See In re Hutchinson Technology Inc.,
852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (wherein the
Court majority’s discussion of the term “technology” was
within the context of whether the mark HUTCHINSON
TECHNOLOGY was primarily merely a surname, but the Court
stated “the fact that the term ‘technology’ is used in
connection with computer products does not mean that the
term is descriptive of them. Many other goods possibly may
be included within the broad term ‘technology’”). In fact,
applicant’s website reveals that applicant consistently
uses “DSS Broadcaster[tm]” and “DSS Broadcaster” throughout
the website. That is, applicant does not use the term
descriptively within its website.
All of the Nexis excerpts submitted by the Examining
Attorney utilize DSS BROADCASTER as a trademark and all
Ser. No. 75/451045
11
clearly treat the term as applicant’s trademark, and some
of the stories explicitly refer to DSS BROADCASTER as
applicant’s trademark.
As stated previously, the burden of establishing a
prima facie case that applicant’s mark is merely
descriptive of the involved goods rests with the Examining
Attorney. In this case, the Examining Attorney did not
submit any evidence whatsoever demonstrating the
descriptive nature of “DSS BROADCASTER,” as a whole, for
the identified goods.
Of course, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubt in favor of the applicant and pass the
application to publication. See In re The Stroh Brewery
Co., 34 USPQ2d 1796 (TTAB 1995). In this way, anyone who
believes that the term is, in fact, descriptive, may oppose
and present evidence in an inter partes proceeding on this
issue to the Board.
Decision: The refusal to register under Section
2(e)(1) is reversed.
*****
Bucher, dissenting:
Inasmuch as I harbor no doubts about the
descriptiveness of the term DSS BROADCASTER for this
Ser. No. 75/451045
12
computer software, I do wish I could convince my colleagues
that we should affirm the Trademark Examining Attorney.
Having failed to do so, I respectfully dissent from the
majority decision. Despite the thin record in the instant
application, and the confusing and contradictory manner in
which the Office over the past several years has dealt with
applicant’s various alleged marks containing the term
“DSS,” I conclude that the instant record, as a whole,
supports an affirmance herein.
Let us look first at the term “DSS.” Whether one
calls it “group DSS,” executive information systems (EIS),3
“on-line analytical processing” (OLAP),4 or knowledge
discovery systems, information systems managers and
business executives both understand that these can all be
lumped into a catch-all category of systems called
“Decision Support Systems,” or “DSS.” Clearly, the first
dictionary definition cited in the majority opinion
demonstrates that the term “Decision Support System,” and
its initialism “DSS,” continue to be useful and inclusive
terms for many types of information systems that support
decision-making. In fact, in the context of the identified
goods, the term “DSS” is a generic designation, and cannot
3 See dictionary definition, supra, p. 3.
4 See applicant’s identification of goods, supra, p. 1.
Ser. No. 75/451045
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be considered as proprietary to MicroStrategy Incorporated.
Notwithstanding applicant’s arguments that these goods do
not comprise a “Decision Support System,” the evidence in
the file shows that applicant’s “on-line analytical
processing” software is touted as enabling “… users at the
departmental, enterprise, supply chain, and even consumer
levels to make better decisions.”5 Further, considering the
LEXIS/NEXIS® evidence and applicant’s own web pages, one
can find references to all the essential components of any
enterprise-wide data delivery architecture, i.e.,
operational data, data warehouses, networks, DSS engines,
and this specific DSS application.6
In fact, turning next to the term “Broadcaster,” we
learn that the specific DSS application involved herein is
an “information broadcast server.” This state-of-the-art
application development environment takes tasks formerly
assumed to be white-collar work (i.e., writing letters,
sending electronic mail messages or issuing requests for
more detailed information) and turns the tasks into
automated activities that directly follow computerized
5 See “M2 Presswire,” November 10, 1998, supra, p. 5.
6 While applicant’s specimens of record (e.g., compact discs)
include the somewhat different words “Decision Support
Solutions,” it would be disingenuous of applicant or this Board
to conclude that a generally understood initialism for a generic
term can be transformed into a source-indicator with such a
clever substitution.
Ser. No. 75/451045
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decision support investigations. The record shows that “e-
broadcast servers” are delivering customized and
personalized “broadcast messages.” That is, the computer
system is actually “broadcasting information” to targeted
recipients, throughout the enterprise and beyond. The DSS
application does this via existing and emerging
communication channels such as e-mail, pagers, fax
machines, mobile telephones, and the like.
I take judicial notice of the fact that “broadcaster”
is a noun for one who disseminates information over a wide
area, or to several recipients simultaneously. This
definition is not limited to whether the disseminator is,
for example, a television station, an individual having a
loud voice or an “information broadcast server.”
Furthermore, to the extent that the decision of Hutchinson
Technology Inc., supra, is even applicable to a discussion
under Section 2(e)(1) of the Act, “broadcaster” for an
information broadcast server has a great deal more
“particularity” than does a broad term like “technology”
for computer products generally.
Finally, as does the majority, I must consider whether
the combination of the generic term “DSS” and the
descriptive, if not generic term, “Broadcaster,” creates
any new or incongruous meanings. To the extent one can
Ser. No. 75/451045
15
conclude that applicant’s revolutionary software is a
“decision support system,” or “DSS,” whose primary,
innovative feature is an information broadcast server, or
“broadcaster,” I find nothing new or incongruous in the
combination. This alleged mark, taken as a whole, would
enable potential purchasers, i.e., those who are
knowledgeable about on-line analytical processing, readily
and immediately to understand the precise nature or the
intended function of applicant’s goods. Following this
logic, presumably anyone else in the information systems
industry, whose decision support system architecture
permits a broadcasting application should also be able to
employ this combined term using the ordinary dictionary
meanings of both of the constituent elements.