Sun Micro-systems, Inc.

Trademark Trial and Appeal Board

Mar 9, 2001

No. 75430476 (T.T.A.B. Mar. 9, 2001)

03/09/01
Paper No. 14
EWH/AKP
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sun Microsystems, Inc.
________
Serial No. 75/430,476
_______
Sally M. Abel of Fenwick & West LLP for Sun Microsystems,
Inc.
Jessie W. Billings, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Managing Attorney)
_______
Before Hanak, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Sun Microsystems, Inc. (applicant) seeks to register
PROCESSBEANS for “computer software for use in the
development and deployment of application programs on a
global computer network." The intent-to-use application
was filed on February 9, 1998.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicants goods, is
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/430,476
2
merely descriptive. When the refusal to register was made
final, applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a 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 conveyed forthwith with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entemann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
At the outset, the Examining Attorney concedes that
the term “processbeans” (whether spelled as one word or two
words) does not appear in any dictionary, and for that
matter, does not appear in any stories in the NEXIS
database or in any other database. In order to establish
that applicant’s mark PROCESSBEANS is merely descriptive,
the Examining Attorney has relied upon a dictionary
Ser No. 75/430,476
3
definition of the word “process,” and stories taken from
the NEXIS database wherein in the term “beans” appears.
We note that the dictionary relied upon by the
Examining Attorney (TechEncyclopedia 1999) defines the word
“process” as follows: “To manipulate data in the computer.
The computer is said to be processing no matter what action
is taken upon the data.” The Examining Attorney’s own
dictionary definition of the word “process” demonstrates
that this word as applied to computers and computer
programs is extremely vague in that it indicates that all
computers and computer programs are continuously engaging
in the act of “processing.”
As for the word “beans,” the Examining Attorney
contends that the NEXIS evidence demonstrates that “they
are software development programs.” (Examining Attorney’s
brief page 2). This point has been conceded by applicant
at page 3 of its Request for Reconsideration.
Nevertheless, given the extremely vague nature of the
word “process” as applied to computers and computer
programs, we find that the composite term PROCESSBEANS is
not merely descriptive because it fails to convey any
information about the qualities and characteristics of
applicant’s computer software with the aforementioned
required “degree of particularity.”
Ser No. 75/430,476
4
Moreover, there exists a second reason for finding
that the term PROCESSBEANS is not merely descriptive. We
find that this term has a double meaning in that besides
being a computer term, it also readily brings to mind the
notion of “processed beans,” a food item. Marks that have
such double meanings are not considered to be merely
descriptive. In re Colonial Stores, 394 F.2d 549, 157 USPQ
382, 385 (CCPA 1968).
Decision: The refusal to register is