V Communica-tions, Inc.

Trademark Trial and Appeal Board

Oct 4, 2000

No. 75347743 (T.T.A.B. Oct. 4, 2000)

Paper No. 13
BAC
10/4/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re V Communications, Inc.
________
Serial No. 75/347,743
______
Douglas A. Chaikin of Peninsula IP Group for V
Communications, Inc.
James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Walters, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 27, 1997, V Communications, Inc. filed an
application, based on Section 1(b) of the Trademark Act, 15
U.S.C. §1051(b), to register the mark OS WIZARD on the
Principal Register for “computer software for managing hard
drives.” Subsequently, applicant filed an amendment to
allege use (which was accepted by the Examining Attorney in
the first Office action), asserting dates of first use and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/347743
2
first use in commerce of September 2, 1997 and November 17,
1997, respectively.
The Examining Attorney refused registration on two
grounds: (1) that the term OS WIZARD when applied to the
goods of the applicant, is merely descriptive of the goods
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1); and (2) that the specimens submitted by
applicant do not show use of the term OS WIZARD as a
trademark, and thus, the term does not function as a
trademark under Sections 1, 2 and 45 of the Trademark Act,
15 U.S.C. §§1051, 1052 and 1127.
When the refusals 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 will address the additional evidence
submitted by applicant, as well as applicant’s requests for
remand, filed with its brief and reply brief.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal; that the Board will not ordinarily consider
additional evidence filed by applicant or the Examining
Attorney after the appeal is filed; and that after the
appeal is filed either the Examining Attorney or applicant
may request that the Board suspend the appeal and remand
Ser. No. 75/347743
3
the application to the Examining Attorney for further
examination. A request for remand must include not only
the additional evidence, but also a showing of good cause
for the remand. See TBMP §1207.02, and cases cited
therein.
With its brief on the case applicant submitted
additional evidence (consisting of excerpts from the
operating manual, packaging material, and an advertising
sheet for applicant’s System Commander® product) and a
request that if the Board would not consider the evidence,
the application be remanded to the Examining Attorney. In
the Examining Attorney’s brief on the case, he noted the
untimely evidence, but stated he did not object thereto.
In view thereof, the evidence submitted with applicant’s
brief on the case has been considered in our decision, and
applicant’s request for remand is moot.
With applicant’s reply brief on the case it submitted
different additional evidence (copies of several third-
party registrations) and again requested that if the Board
would not consider this evidence, the application be
remanded to the Examining Attorney. Inasmuch as this
material was submitted untimely, and applicant has not
established good cause for remand pursuant to Trademark
Rule 2.142(d), the request for remand is denied, and this
Ser. No. 75/347743
4
evidence has not been considered in our determination of
this case. We add that even if this evidence had been
considered, it would not have altered our decision herein.
Turning to the refusal to register on the basis that
the term OS WIZARD does not function as a trademark as used
by applicant, the Examining Attorney contends as follows
(brief, pp. 11-12):
The proposed mark does not function as a
trademark because it is merely
informational and would not be perceived
by the public as a trademark for a
software program. The mark as used in
applicant’s specimens would be perceived
by the public merely as a pull down menu
which is a component of the overall
program. [System Commander Deluxe]
Given that the “OS Wizard” menu is in
the same font and size as the five other
menus beside it, it seems highly
unlikely that the public would perceive
that particular pull down menu as either
a mark or the source of the goods. The
term “OS Wizard” used as a pull down
menu is no more a trademark for the
goods than the menus “Setup” and
“Detail” next to it are. It simply
tells the user where in the program to
click in order to access the operating
system installation wizard.
The specimen of record is one side of a box that is
the packaging for the goods. We agree with the Examining
Attorney that applicant’s use of the term “OS WIZARD” on
the pull down menu on the computer screen pictured on its
specimen of record is use which does not function as a
Ser. No. 75/347743
5
trademark. However, there are other uses of the term “OS
WIZARD,” appearing on the same specimen, which are valid
trademark uses. For example, the specimen includes the
following uses: “OS Wizard creates the best
configuration for your new operating system” appearing in a
box (titled “System Commander Features”) in the corner of
the specimen; and in the text of the specimen is the
heading “OS Wizard. The easiest way to install your new
OS”; and the sentence “System Commander Deluxe introduces
the OS Wizard!”
Because there are valid trademark uses of the applied-
for mark on the specimens of record, we find that the
Examining Attorney’s refusal to register OS WIZARD on the
basis that it does not function as a trademark cannot be
upheld. This refusal is accordingly reversed.
Turning next to the refusal to register on the basis
that the term OS WIZARD is merely descriptive1, the
Examining Attorney contends that “OS” refers to “operating
system” and “wizard” refers to an interactive help utility
in computer software; and that in combination the term OS
WIZARD connotes a computer help utility relating to an

1 Our finding that the applied-for mark is used as a trademark on
the specimens is, of course, an issue totally separate from the
issue of mere descriptiveness of the mark in relation to the
involved goods.
Ser. No. 75/347743
6
operating system. Essentially, it is the Examining
Attorney’s position that the term OS WIZARD is merely
descriptive of a significant feature, function or purpose
of applicant’s goods.
In support of his position, the Examining Attorney
submitted dictionary definitions of “OS” from, inter alia,
Webster’s Unabridged Dictionary (Second Edition) where “OS”
is defined as “2. Computers. operating system,” and
Microsoft Press Computer Dictionary (Third Edition) where
“OS” is defined as “See operating system.” The Examining
Attorney also submitted the Webster’s New World Dictionary
of Computer Terms (Sixth Edition) definition of “wizard” as
follows2:
“An interactive help utility,
originally developed by Microsoft for
its Windows applications (and now
widely imitated). The wizard guides
the user through each step of a multi-
step operation, offering helpful
information and explaining options
along the way.”

2 The Examining Attorney’s request (brief, p. 6) that the Board
take judicial notice of dictionary definitions attached to his
brief is granted. See TBMP §712.01, and cases cited therein.
However, applicant’s request that the Board take judicial notice
of three common English dictionaries (which applicant states do
not include a definition of “OS”) is denied because applicant did
not attach copies of the relevant pages from the named
dictionaries. In any event, the absence of “OS” from some
dictionaries is not persuasive of a different result herein.
Ser. No. 75/347743
7
In addition, the Examining Attorney relies on
applicant’s numerous uses of the terms “OS” and “operating
system” on its specimens of record. The following are
examples: (i) “Now you no longer have to fear losing
valuable time and data while working out the kinks with
your new operating system (OS)”; (ii) “System Commander®
Deluxe makes it safe and easy to get your new operating
system up and running...”; (iii) “The safest and easiest
way to add a new operating system”; and (iv) “...you can
easily add a new OS.”
In further support of his position, the Examining
Attorney submitted: (i) copies of several excerpted stories
from Nexis showing the letters “OS” used in relation to
computer goods; (ii) copies of several excerpted stories
from Nexis demonstrating descriptive use of the term
“wizard” to refer to a computer help utility; (iii) copies
of several excerpted stories from Nexis demonstrating use
of the term “wizard” in close proximity to the terms
“operating system”; and (iv) copies of several third-party
registrations, all for computer software, which include
disclaimers of either the letters “OS” or the term
“wizard.”
Ser. No. 75/347743
8
Examples from the Examining Attorney’s Nexis evidence3
showing use of the term “wizard” are shown below:
...And it doesn’t take a degree in
computer science to set up: A wizard guides
you every step of the way. ... “P/C
Computing,” March 1999;
For many users, SmartSuite’s new
Internet/intranet Web-site development tool
will be the jewel in the Millennium Edition’s
crown. Aptly name FastSite, this slick,
easy-to-use tool comes with a wizard that
should allow even the most computer-phobic to
create a no-frills Web site in under 10
minutes flat. ... “Computer Shopper,”
December 1, 1998;
...The setup wizard detects which
Windows operating system is running and
installs the appropriate drivers. ...
“Computer Reseller News,” December 21, 1998;
...One beta tester of the Windows 200
operating system was enthusiastic about the
Active Directory wizard. ... “PC Week,”
December 21, 1999;
...Network setup is substantially easier
with the new version of the operating system.
There is a networking wizard that sets up all
aspects of a network connection,...
“InformationWeek,” November 2, 1998; and
...Windows 98 is a more stable and
robust operating system with additional tools
and wizards that will help you prevent and/or
recover from many problems that plague

3 Applicant argues, citing In re The American Fertility Society,
188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999), that the
Examining Attorney’s Nexis evidence is “faulty” because it
includes no uses of the terms “OS WIZARD” together, and does not
show that the public understands the term “OS WIZARD” to refer to
a genus of goods. This argument is inapposite as the cited case
involves evidence supporting a finding of genericness, not mere
descriptiveness.
Ser. No. 75/347743
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Windows 95. ... “St. Petersburg Times,”
October 26, 1998.
We note the following use of the word “wizard” by
applicant from page 19 of applicant’s user manual
(submitted as an exhibit to applicant’s brief on the case):
OS Wizard, by default, always launches
with the wizard dialog box open at the
first screen. To access any of the
menu functions, you will need to first
cancel the wizard. If you go back to
the wizard, simply choose File then OS
Wizard.
Applicant urges reversal on the basis that the burden
of establishing the mere descriptiveness of a mark is on
the Patent and Trademark Office; that the Examining
Attorney improperly dissected the mark rather than
considering the mark as a whole in determining
descriptiveness; that the Examining Attorney’s reliance on
specialized computer dictionaries primarily used by
computer professionals is improper because the Office
should be constrained to refer only to common English
dictionaries to show the ordinary significance of the
meaning of words to the public4; that under common

4 In support of this argument, applicant cites In re WSI
Corporation, 1 USPQ2d 1570 (TTAB 1986), specifically for the
proposition that the Office does not accept the Acronyms,
Initialisms, & Abbreviations Dictionary (AIAD) as prima facie
evidence of the meanings of such terms. The WSI case is limited
to the facts therein, and we do not find it applicable here. (In
the case now before us, the Examining Attorney had cited the AIAD
for its definition of “OS” as “Operating System [Computer
Ser. No. 75/347743
10
dictionary meanings “OS” can mean many things (e.g., “old
series,” “on-site,” “operational sequence”) and a “wizard”
in an ordinary English sense is a sorcerer, magician, or
skillful or clever person; that therefore, the terms “OS
WIZARD,” taken together, could mean “the operational
sequence of a magician or sorcerer, or a Wizard who is an
operations specialist” (brief, p. 9), or could even refer
to a spin on “the famed Frank L. Baum book, The Wizard of
Oz” (brief, p. 11)5; that the purchasing public will have to
use imagination and thought to ascertain the nature of
applicant’s product; that doubt is resolved in applicant’s
favor; and that competitors could easily compete “by using
a slightly different name” and passing this application on
to publication “will not inhibit competition” (brief, p.
17).
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1), if it immediately

science].”) Moreover, the Office accepts specialized
dictionaries to define words used in particular trades or
industries, e.g., medical dictionaries, engineering dictionaries,
computer dictionaries. See e.g., In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d (not for publication), 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989); and In re Crown Zellerbach
Corp., 229 USPQ 318 (TTAB 1985).
5 While it may be a vague play on the words, we do not agree that
the purchasing public would relate OS WIZARD, in the context of
applicant’s involved goods, to the book “The Wizard of Oz.” This
is especially true in light of applicant’s actual uses of OS
WIZARD, none of which refer or relate in any way to the context
of the book, “The Wizard of Oz.”
Ser. No. 75/347743
11
conveys information concerning an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term or phrase describe all of
the properties or functions of the goods or services in
order for it to be considered merely descriptive thereof;
rather, it is sufficient if the term or phrase describes a
significant attribute of the goods or services.
The issue of whether a particular term or phrase is
merely descriptive must be determined not in the abstract,
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 possible significance that the term or
phrase is likely to have to the average purchaser of the
goods or services because of the manner in which it is
used. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991); and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). See also, 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §§11:66-11:71 (4th ed.
2000). Further, the question is not whether someone
Ser. No. 75/347743
12
presented with only the mark could guess what the goods
are. Rather, the question is whether someone who knows
what the goods are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
In this case, the Examining Attorney has met the
burden of establishing a prima facie case of mere
descriptiveness. In fact, this record includes ample
evidence that in the context of applicant’s goods,
“computer software for managing hard drives,” the term “OS”
refers to “operating system” (see e.g., dictionaries and
applicant’s own use of “OS” on its specimens), and the term
“wizard” refers to a computer software tool or utility
which guides the user through a step-by-step process6 (see
e.g., the dictionary, Nexis excerpts, and page 19 of
applicant’s user manual). The term OS WIZARD, considered
as a whole and in its entirety, when applied to applicant’s
computer software products, is merely descriptive of a
significant feature, purpose and function of the goods,

6 Applicant characterizes its goods as follows (applicant’s
response filed November 6, 1998, p. 10): computer software that
“takes the consumer/user through a process which would help the
consumer/user install a new operating system, or offering helpful
information and explaining options along the way (by an easy
step-by-step guiding process).”
Ser. No. 75/347743
13
specifically, that the purchasing public would understand,
without imagination or conjecture, that applicant’s
software is an interactive tool or utility used in relation
to a computer operating system. That is, we find that the
term OS WIZARD, when used in connection with the involved
goods, immediately conveys to the purchasing public, the
idea of computer software which is an interactive guide
tool or utility in relation to a computer operating system.
See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987) (APPLE PIE merely descriptive for potpourri); In re
Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [FIRSTIER (stylized) merely descriptive
for banking services]; In re Cryomedical Sciences Inc., 32
USPQ2d 1377 (TTAB 1994) (SMARTPROBE merely descriptive of
disposable cryosurgical probes); and In re Medical
Disposables Co., 25 USPQ2d 1801 (TTAB 1992) (requirement
for a disclaimer of the merely descriptive terms “medical
disposables” for various disposable wash cloths, garments,
bed sheet liners, and the like affirmed).
Further, even if applicant is the first (and/or only)
entity to use the term OS WIZARD in relation to computer
software for managing hard drives, such is not dispositive
where, as here, the term unquestionably projects a merely
Ser. No. 75/347743
14
descriptive connotation. See In re Tekdyne Inc., 33 USPQ2d
1949, 1953 (TTAB 1994), and cases cited therein.
Suffice it to say that none of applicant’s other
arguments, nor any of the other cases cited by applicant,
is persuasive of a different result on the issue of mere
descriptiveness.
Decision: The refusal to register under Sections 1, 2
and 45 is reversed, and the refusal to register under
Section 2(e)(1) is affirmed.
C. E. Walters
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board