Unisys Corp.

Trademark Trial and Appeal Board

Jan 28, 1998

EX (T.T.A.B. Jan. 28, 1998)

Paper No. 10
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JAN 28,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Unisys Corporation
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Serial Nos. 74/605,313; 74/610,287; 74/633,387
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Thomas J. Scott for applicant.
Josette M. Beverly, Trademark Examining Attorney, Law Office
102 (Myra Kurzbard, Managing Attorney).
____________
Before Quinn, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Unisys Corporation has filed trademark applications to
register the following marks:
USOFT THE SERVER/CLIENT SOFTWARE COMPANY
for “advertising, promoting and marketing of
computer software of others, namely, a series of
object-oriented software development tools used to
build programs, run and manage networks by
distributing advertising information via
electronic, hard copy and trade shows
presentations,” in International Class 35;
“installation of computer software, namely, a
series of object-oriented software development
tools used to build programs, run and manage
networks,” in International Class 37; and
“computer software consultation and computer
programming for others, namely, a series of
Serial Nos. 74/605,313; 74/610,287; 74/633,387
2
object-oriented software development tools used to
build programs, run and manage networks,” in
International Class 421; and
THE SERVER/CLIENT SOFTWARE COMPANY
for “computer software – namely, a series of
object-oriented software development programs used
to build, run and manage applications,” in
International Class 9; “printed publications –
namely, programmer, operator, installation and
maintenance manuals for use with object-oriented
software development tools used to build, run and
manage applications,” in International Class 162;
“advertising, promoting and marketing of computer
software of others, namely, a series of object-
oriented software development tools used to build
programs, run and manage networks by distributing
advertising information via electronic, hard copy
and trade shows presentations,” in International
Class 35; “installation of computer software,
namely, a series of object-oriented software
development tools used to build programs, run and
manage networks,” in International Class 37; and
“computer software consultation and computer
programming for others, namely, a series of
object-oriented software development tools used to
build programs, run and manage networks,” in
International Class 42.3
With respect to the mark USOFT THE SERVER/CLIENT
SOFTWARE COMPANY, the Trademark Examining Attorney required
a disclaimer of the phrase THE SERVER/CLIENT SOFTWARE
COMPANY and has finally refused registration under Section 6
of the Trademark Ace, 15 U.S.C. 1056, on the ground that

1 Serial No. 74/605,313, filed December 1, 1994, based on based on an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified services.
2 Serial No. 74/633,387, filed February 13, 1995, based on an allegation
of a bona fide intention to use the mark in commerce in connection with
the identified goods.
3 Serial No. 74/610,287, filed December 12, 1994, based on based on an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified services.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
3
this portion of applicant’s mark is a unitary phrase which
is merely descriptive in connection with applicant’s
services and, thus, applicant may not claim exclusive rights
in the phrase THE SERVER/CLIENT SOFTWARE COMPANY apart from
the mark as a whole. Similarly, with respect to the mark
THE SERVER/CLIENT SOFTWARE COMPANY, the Trademark Examining
Attorney has finally refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant’s mark is merely descriptive of its
goods and services.4
Applicant has appealed in each case. In the interest
of judicial economy, as the issues in these three appeals
are essentially the same and the facts are similar, we
consider the appeals together and issue a single opinion.
Both applicant and the Examining Attorney have filed briefs,
but oral hearings were not requested. We affirm the refusal
to register in each case.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re

4 We note that in each of the three applications herein, applicant
entered a disclaimer of “THE” and “SOFTWARE COMPANY” apart from the mark
as a whole. However, in its brief on appeal in each case, applicant
withdrew the disclaimer. Therefore, we do not consider these
disclaimers herein.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
4
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods, only that
it describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is 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 mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
We take judicial notice of the following excerpts from
dictionary definitions of “server,” “client,” “client
server,” and “client/server architecture”:
server5: a functional unit that provides shared
services to workstations over a network.
client6: A functional unit that receives shared
services from a server.
client/server architecture7: An arrangement used
on local area networks that makes use of
‘distributed intelligence’ to treat both the
server and the individual workstations as
intelligent, programmable devices, thus
exploiting the full computing power of each.

5 IBM Dictionary of Computing, 1993.
6 id.
7 Microsoft Press Computer Dictionary, 1991. Although this definition
was submitted in an untimely manner by applicant with its brief, we take
judicial notice of this definition.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
5
client server8: A computer on a local area
network that you can request information or
applications from. The idea is that you - the
user - are the client and . . . - the slave - is
the server. That was the original meaning of the
term. Over time, client server began to refer to
a computing system that splits the workload
between desktop PCs (called ‘workstations’) and
one or more larger computers (called ‘servers’)
joined on a local area network (LAN).
software9: All or part of the programs,
procedures, rules, and associated documentation
of a data processing system.
Additionally, we note the following excerpts of
articles from the LEXIS/NEXIS database, which were submitted
by the Examining Attorney:
“Server and client software comes on two disks,
and you install Imagery HSM at a Microsoft Windows
client.” LAN Times, March 4, 1996.
“Meridian Data’s CD Net Plus is designed to solve
this bottleneck. A combination of server and
client software, the product approaches the
situation from the viewpoint of the network
administrator.” Computer Reseller News, December
11, 1995.
“The world’s first free-of-charge secure
server/client software is available from INTERWEB
INC which incorporates the SSL protocol and is
compatible with the Netscape Navigator . . .”
Telecomworldwire, February 6, 1996.
“The last thing an already harried network
administrator needs is a CD-ROM server with client
software that will generate help desk calls.”
InfoWorld, February 12, 1996.

8 id.
9 IBM Dictionary of Computing, supra.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
6
In view thereof, the Examining Attorney contends that
the terms SERVER, CLIENT and SOFTWARE have well understood
meanings in the computer industry; that the slash “/”
between SERVER and CLIENT in applicant’s mark means “and” or
“or”; that the evidence demonstrates that the terms SERVER
and CLIENT are “used in conjunction with one another to
refer to a type of data processing architecture”; that the
wording SOFTWARE COMPANY merely describes the nature of
applicant’s business entity; that SERVER/CLIENT merely
describes the type of software company, as applicant
characterizes its services as featuring server/client
software products; and, thus, that the combined phrase THE
SERVER/CLIENT SOFTWARE COMPANY merely describes “the type of
business establishment from which [applicant’s] services
emanate.”
Applicant readily acknowledges “the extensive, well-
known use” in the computer industry of the terms “server,”
“client,” “client/server software,” “server software,”
“client software,” and “server and client software” and that
the phrase “client/server” is “ingrained and very familiar
to members of the computer industry.” However, while
“client/server” may be a term of art in the computer
industry, applicant contends that it’s reversal of the two
components of that term, i.e., to form the phrase
SERVER/CLIENT, creates a distinctive mark in connection with
Serial Nos. 74/605,313; 74/610,287; 74/633,387
7
its goods and services “wherein the server software is the
focus of increased functionality in a client/server
environment.” In support of the contention that its
particular juxtaposition of “server” and “client” is unique,
in two of the three applications herein applicant submitted
an article10 by the ButlerBloor Organization11 describing and
evaluating applicant’s goods and services, in pertinent
part, as follows:
USoft calls itself the server/client software
company. This is well thought out. It makes the
reader stop and think. Most particularly, it
reflects the emphasis on the server. Unlike some
so-called competitive products, which are really
client development tools and actually do very
little at the server level, USoft have (sic) not
neglected client performance either.
In the present case, it is our view that, when applied
to applicant’s proposed goods and services, the phrase THE
SERVER/CLIENT SOFTWARE COMPANY immediately describes,
without conjecture or speculation, a significant feature or
function of those goods and services. In particular,
applicant is a software company which intends to offer
client and server computer software products and related
services which are “server-centric” in application. Nothing

10 There is no indication as to whether this report is independently
prepared or commissioned by applicant.
11 The record in application Serial No. 74/605,313 does not contain the
ButlerBloor report, although the report is referenced in the brief in
that case. Thus, while the report cannot be considered in connection
with the appeal in that case, we note that our decision in that case
would be the same if the report was of record in that application.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
8
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
purchasers of and prospective customers for applicant’s
goods and services to readily perceive the merely
descriptive significance of the phrase THE SERVER/CLIENT
SOFTWARE COMPANY as it pertains to those goods and services.
Applicant is correct that a combination of descriptive
words may result in an arbitrary unitary designation which
is registrable. However, this is true only if the
juxtaposition of the words is inventive, evokes a unique
commercial impression, or if the term has a bizarre or
incongruous meaning as applied to the goods or services.
See, In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983) and cases cited therein. Such
is not the case herein. Clearly, the combination of the
words “server” and “client” into the term SERVER/CLIENT has
a meaning which ordinary usage would ascribe to those words
in combination and the fact that the term SERVER/CLIENT is
not found in the dictionary is not controlling on the
question of registrability. See, In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed Cir. 1987) and In re
Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977).
Further, rather than evoking a unique commercial impression
or creating an incongruous meaning, the phrase SERVER/CLIENT

Serial Nos. 74/605,313; 74/610,287; 74/633,387
9
describes precisely the fact, touted by applicant, that its
software and services focus on the server.12
Finally, the fact that applicant may be the first
entity to use the phrase SERVER/CLIENT in connection with
its goods and services is not dispositive where, as here,
such term unequivocally projects a merely descriptive
connotation. See, In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973).
In conclusion, we find the phrase THE SERVER/CLIENT
SOFTWARE COMPANY to be merely descriptive in connection with
the proposed goods and services identified in the
applications herein.
Decision: The refusals in applications Serial Nos.
74/610,287 and 74/633,387 under Section 2(e)(1) of the Act
are affirmed. Likewise, the requirement for a disclaimer in
application Serial No. 74/605,313 under Section 6 of the Act
is affirmed. With respect to application Serial No.
74/605,313, applicant is allowed until twenty days from the
mailing date of this decision to submit a proper disclaimer

12 Nor does the slash “/” between the words SERVER and CLIENT lend a
distinctive quality to applicant’s proposed mark.
Serial Nos. 74/605,313; 74/610,287; 74/633,387
10
of the phrase THE SERVER/CLIENT SOFTWARE COMPANY, failing
which registration will be refused. See, Trademark Rule
2.142(g).
T. J. Quinn
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board