SimDesk Tech-nologies, Inc.

Trademark Trial and Appeal Board

Feb 8, 2006

No. 78266434 (T.T.A.B. Feb. 8, 2006)

2/8/06

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
___________

In re SimDesk Technologies, Inc.
______________

Serial No. 78266434
____________

Scott J. Stevens, Esq. for SimDesk Technologies, Inc.

Ellen Awrich, Trademark Examining Attorney, Law Office 116
(M. L. Hershkowitz, Managing Attorney).
_____________

Before Hanak, Hairston and Holtzman, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

SimDesk Technologies, Inc. (applicant) seeks to register
WORLD WIDE SERVER MP in standard character form for the
following goods and services:
International Class 9: 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
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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.

International Class 42: 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 intent-to-use application was filed on June 24, 2003.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark is merely descriptive of applicant’s goods
and services. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
an oral hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods [or
services].” In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (emphasis added); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976). Moreover, the immediate idea must be
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conveyed forthwith with a “degree of particularity.” In re
TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978); In re
Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d 90-
1495 (Fed. Cir. February 13, 1991).
At page 5 of her brief, the Examining Attorney argues
that “based on the dictionary definitions of record, it is
clear that the term WORLD WIDE SERVER is descriptive of
applicant’s software, and application service provider
services featuring software, which use a world wide server.”
In this regard, the Examining Attorney cites The American
Heritage Dictionary of the English Language (3d ed. 1992).
This dictionary defines the word “worldwide” as meaning
“involving or extending throughout the entire world;
universal: a worldwide epidemic.” The dictionary defines the
word “server” as “a computer or program that controls a
central repository of data that can be downloaded and
manipulated in some manner by a client.”
However, the Examining Attorney simply fails to even
explain (much less prove) how the term “world wide server” is
descriptive of any quality or characteristic of applicant’s
goods or services. Indeed, throughout her brief the
Examining Attorney makes no distinction in her discussion of
Ser. No. 78266434
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mere descriptiveness between applicant’s goods and
applicant’s services.
Of course, the issue before this Board is not whether
the term “world wide server” is merely descriptive of
applicant’s goods or services. Rather, the issue is whether
applicant’s mark WORLD WIDE SERVER MP (emphasis added) is
merely descriptive of applicant’s goods or services. In this
regard, it should be noted that in the first Office Action
the Examining Attorney contended that the initialism MP means
“multiprocessing.” The Examining Attorney cited the
TechEncyclopedia (2001).
In response, applicant stated that the initialism MP has
124 meanings. Applicant cited www.acronymfinder.com. To its
credit, applicant acknowledged at page 3 of its response that
“the majority of these [124] meanings are not related in any
way to applicant’s goods or services.” However, continuing
at page 3, applicant contended that there are numerous
additional meanings of the initialism MP that are just as
relevant to applicant’s goods or services as is
“multiprocessing.” These include the following meanings:
main process; master processor; maximum power; message
processor; micro-processor; module processor; multi purpose;
Ser. No. 78266434
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multilink protocol; multi-point; multiple platform; and
multi-protocol.
In her second Office Action, the Examining Attorney
never took issue with applicant’s contention that the
initialism MP has numerous meanings many of which (at least
12) are relevant to applicant’s goods or services. Rather,
without offering any explanation, the Examining Attorney now
contended that as applied to applicant’s goods and services,
the initialism MP meant “multi-platform.” In particular, the
Examining Attorney in her second Office Action never
explained why she was now departing from the view expressed
in her first Office Action that the initialism MP meant
“multiprocessing.” Presumably, the Examining Attorney
changed her view as to the meaning of the initialism MP
because she was able to find 5 articles from the Nexis
database and a few Internet stories where the term “multi-
platform” was used in proximity to MP. As an example, an
article from the October 1, 2001 edition of Military &
Aerospace Electronics reads, in part, as follows: “Laurel
Technologies … will provide Explorer MP rugged portable
multi-platform work stations for Army and Marine Corps
digital battlefield applications.” The Examining Attorney
never explained how this article or the others she submitted
Ser. No. 78266434
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demonstrated that as used in applicant’s mark WORLD WIDE
SERVER MP, the initialism MP means “multi-platform,” and only
“multi-platform.”
In summary, we find that even assuming for the sake of
argument that the phrase “world wide server” is descriptive
of applicant’s goods and services, that the Examining
Attorney has simply failed to prove that applicant’s mark
WORLD WIDE SERVER MP is likewise merely descriptive of
applicant’s goods and services. As previously noted, the
Examining Attorney has never taken issue with applicant’s
contention that the initialism MP has numerous (at least 12)
very different meanings as applied to applicant’s goods and
services. Indeed, many of the other definitions of MP
arguably better “fit” with the term “world wide server” than
the definition currently of preference to the Examining
Attorney (multi-platform). As just one example, given that
applicant’s goods are communications software and applicant’s
services include email, the definition “message processor” is
arguably a better “fit” (i.e. “world wide server message
processor”) than “multi-platform,” which results in “world
wide server multi-platform.”
Therefore, with the initialism MP having at least 12
plausible meanings, applicant’s mark WORLD WIDE SERVER MP
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simply does not immediately convey information about the
qualities or characteristics of applicant’s goods or services
with the required “degree of particularity.” TMS Corp. of
the Americas, 200 USPQ at 59; Entenmann’s Inc., 15 USPQ2d at
1751.
Decision: The refusal to register is reversed.