SimDesk Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jan 12, 2006

No. 78269442 (T.T.A.B. Jan. 12, 2006)

Mailed:
12 January 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SimDesk Technologies, Inc.
________

Serial No. 78269442
_______

Scott J. Stevens of Woodard, Emhardt, Moriarty, McNett &
Henry LLP for SimDesk Technologies, Inc.

Jacqueline A. Lavine, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Seeherman, Hohein, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 1, 2003, SimDesk Technologies, Inc.
(applicant) applied to register the mark WORLD WIDE SERVER,
in standard character form, on the Principal Register for
goods and services ultimately identified as follows:
Communications software for connecting computer users
to a global computer network and for allowing computer
users to access on-line software applications, namely,
word processing, spreadsheet, database, personal
information management, file management, and email
applications, and applications that provide a user
with the ability to design and create data archiving
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 78269442
2
systems, to send printing instructions via a global
computer network to a remote printer, and to develop
multimedia presentations by integrating text, audio,
graphics, still images and/or moving pictures in Class
9.

Application service provider services featuring on-
line software applications for use in word processing,
spreadsheet development, database development,
personal information management, file management, e-
mail, remote printing, data archiving system
development and multimedia presentation development in
Class 42.

The application (Serial No. 78269442) is based on an
allegation of a date of first use anywhere and in commerce
of the mark for both classes of August 1, 2002. The
examining attorney has refused to register applicant’s mark
on the ground that the mark is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). The examining attorney maintains that “WORLD
WIDE SERVER merely describes a server that has the capacity
to control a repository of data throughout the entire
world. The composite mark means nothing else – it is a
server that has worldwide functionality or use. In fact,
applicant’s own specimens would seem to indicate that its
server has world-wide functionality by virtue of its being
connected to a global computer network.” Brief at 3-4.
Applicant’s position is that “dictionary references
suggest at least two definitions for both world wide (i.e.
international or ubiquitous) and server (i.e., a program
Ser. No. 78269442
3
that provides services to other programs or a computer that
provides some services to other computers) giving at least
four independent possible meanings for the combination of
terms.” Brief at 4.
After the examining attorney made the refusal final,
applicant appealed to this board.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (A “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service”).
To be merely descriptive, a term need only describe a
single significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). In order to
assess whether a term is merely descriptive, we must
Ser. No. 78269442
4
consider the mark in relation to the goods and services,
not simply in the abstract. Abcor, 200 USPQ at 218.
We now look at the evidence in the case. The
examining attorney included the following definitions in
her first Office Action and her denial of the request for
reconsideration:
World wide – Involving or extending throughout the
entire world; universal: a worldwide epidemic.
Dictionary.com.

Server – A computer system in a network that is
shared by multiple users. Servers come in all sizes
from x86-based PCs to IBM mainframes…

The term “server” may refer to both the hardware and
software (the entire computer system) or just the
software that performs the service.
TechEncyclopedia.

Server – a computer or device on a network that
manages network resources. For example, a file server
is a computer and storage device dedicated to storing
files. Any user on the network can store files on the
server.
www.webopedia.com

We note the following additional definition of
“server” as “a specialized network device or software that
provides a service to other devices. The most common
services on a LAN [Local Area Network] are printer servers,
file servers, and mail servers.” Tom Fahey, Net.speak -
The Internet Dictionary (1994).1

1 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
Ser. No. 78269442
5
The examining attorney also points to applicant’s own
website that describes its goods and services as follows:
SimDesk Technologies, Inc. has created a revolutionary
combination of web-enabled client software and highly
scalable data communications technology that are the
most significant and pioneering Internet innovation in
the last 20 years. This quantum leap is made possible
by a unique data transport technology and high-speed
server architecture that produce system efficiency,
reliability, and scalability that are orders of
magnitude beyond previous standards. SimDesk’s World
Wide Server™ provides communication, collaboration,
and personal services securely to any Internet-capable
computer, wireless, or personal device, anywhere in
the world.

The website makes it clear that a key feature of
applicant’s goods and services are their “high-speed server
architecture” that helps to provide communication,
collaboration and personal services “anywhere in the
world.” An example of the use of applicant’s goods and
services is provided in a testimonial on its website:
Another advantage of SimHouston is that the works
saved on SimHouston are saved onto a network. This
means that a project started on a computer at one
branch can be brought up on a computer at another
without having to save to a disk. Some nights our
branch closes at 6 pm, sometimes right when a student
is in the middle of writing their assignment. They
can simply save their work, and go to a branch that is
open until 9 pm to finish their homework.

The example above makes it clear that applicant’s
goods and services involve a server that is shared by

596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 78269442
6
multiple users that permits these users to access and store
data and programs from anywhere in the world, i.e., world
wide.
Specifically, applicant’s software and services
describe accessing data and programs online:
Communications software for … allowing computer users
to access on-line software applications, namely, word
processing, spreadsheet, database, personal
information management, file management, and email
applications, and applications that provide a user
with the ability to design and create data archiving
systems, to send printing instructions via a global
computer network to a remote printer, and to develop
multimedia presentations by integrating text, audio,
graphics, still images and/or moving pictures.

Application service provider services featuring on-
line software applications for use in word processing,
spreadsheet development, database development,
personal information management, file management, e-
mail, remote printing, data archiving system
development and multimedia presentation development.

The fact that applicant’s software and services connect
computer users online and to a global computer network
would provide access to the data and programs “globally” or
“world wide.”
The examining attorney has also included some pages
from Internet sites to show that the term “world wide
server” is used to refer to servers that provide access to
data and/or programs on a worldwide basis (emphasis added).
Webmaster MacIntosh: How to Build your Own World-Wide
Server Without Really trying/Book and CD-ROM
Ser. No. 78269442
7
This book is a fast and easy guide for turning your
Macintosh into a World Wide Web site…
All the setup and configuration information you need
for your Web server.
www.brianbooks.com

The Official BSC World Wide Server
The World Wide Web provides global access to a wide
range of information services…
BSC [Birmingham-Southern College] Personal Home Page
server stores home pages of students, faculty and
staff.
www.bsc.edu

You are on the HOME page of the Art Nouveau World Wide
server: the most complete site about Art Nouveau on
the web.
http://kubos.org

When we consider the evidence of record and the mark
as a whole, it is clear that prospective purchasers who
encounter applicant’s term WORLD WIDE SERVER will
immediately understand that, when it is used in association
with software and services that provide a server that
permits access to data and programs on a world wide basis,
the term merely describes a significant feature of these
goods and services.
Applicant argues (Reply Brief at 2) that:
[T]he term “world wide server” has at least two
meanings, based on the definitions provided by the
Examining Attorney, i.e., “software that permits a
user in one location, such as at home, to designate
and use any internet-connected computer anywhere in
the world as a server” or “software that allows a user
who may be traveling anywhere in the world to use a
computer at that location as a server.” To a
purchaser of computer software, either meaning is
equally plausible or likely, yet they have very
Ser. No. 78269442
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different meanings and would create different
impressions in the minds of those purchaser[s]. More
information is needed by a purchaser to ma[k]e an
accurate determination of what features and functions
actually are performed by Applicant’s goods and
services. This requirement for more information is
the essence of a suggestive mark. Additionally, as a
third possibility, the mark is suggestive of a single
computer or computer system that spans the entire
globe.

Applicant’s arguments are not persuasive.
Fundamentally, applicant overlooks the requirement that the
question of descriptiveness is considered in the context of
the goods or services. See Abcor, 200 USPQ at 218. Often,
the definitions of words in a mark can be combined to
create a variety of different meanings. However, the
context determines whether the mark would be descriptive.
See In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156,
1159 (TTAB 2003):
Similarly, that applicant can take the dictionary
definitions of the individual words in the term and
come up with a meaning that makes no sense in
connection with the services recited in the
application does not mandate a different conclusion on
the issue of mere descriptiveness. As stated above,
the determination of descriptiveness is made in the
context of the identified services, and the meaning of
“ETHNIC ACCENTS” in connection with applicant's
services is clearly that of home furnishings or
decorations relating to various ethnicities.

See also In re Time Solutions Inc., 33 USPQ2d 1156, 1158
(TTAB 1994):
When consumers encounter applicant's mark, YOUR HEALTH
INSURANCE MANAGER, used in the context of applicant's
Ser. No. 78269442
9
advertising, which describes applicant's goods as "new
PC software to manage your medical records and health
insurance" and lists the various tasks performed by
the software programs, as recited above, we have no
doubt that the mark will immediately convey to them
information concerning a significant feature or
function of applicant's programs, namely, that they
manage, i.e., handle with skill, personal health
insurance matters.

While applicant has combined the definitions of the
terms “world wide” and “server” and come up with several
different meanings, that is not of itself significant. In
this case, we must consider the mark in the context of
applicant’s communications software for connecting computer
users to a global computer network and for allowing
computer users to access on-line software applications via
a global computer network to a remote printer and
application service provider services featuring on-line
software applications. It is clear from the record that
applicant is providing a server with online applications
and data storage that is accessible worldwide. As such,
the term immediately informs potential users of a feature
of its goods and services. The fact that the term in a
different context may also describe, inter alia, software
that would permit a traveler to designate a computer at any
location as a server does not mean that the term does not
also describe applicant’s goods and services. See In re
Ser. No. 78269442
10
Polo International Inc., 51 USPQ2d 1061, 1062-63 (TTAB
1999):
Applicant is correct that the photocopy of a page from
the dictionary submitted by the Examining Attorney
shows definitions of both “doc” (for “doctor”), and
“doc.” (for “document”). However, we are not
persuaded that it is the presence or absence of the
punctuation which changes the meaning. Rather, the
relevant meaning of either abbreviated term "doc" or
"doc." will be understood as "document" by the
purchasing public in relation to the involved goods.
If applicant produced goods related to the medical
field, or specifically related to physicians, then the
term “DOC” would be readily understood by the public
as referring to “doctor.” However, here applicant's
goods are computer software for document management,
and “DOC” will be readily understood as referring to
documents.

When we consider applicant’s mark WORLD WIDE SERVER in
the context of the identified goods and services, we
conclude that the term is merely descriptive.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.