IN RE SIMPLEGRID TECH., INC., 77709074 (TTAB 3-23-2011)
Serial No. 77709074United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 23, 2011Page 1
Ayan M. Afridi of Afridi Law for SimpleGrid Technology, Inc.
Margery A. Tierney, Trademark Examining Attorney, Law Office 111 (Robert Lorenzo, Managing Attorney).
Before Grendel, Cataldo and Ritchie, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
SimpleGrid Technology, Inc. has applied to register the mark SIMPLEGRID in standard characters on the Principal Register for “computer hardware and software consulting services; integration of computer systems and networks; computer services, namely, remote monitoring and disaster recovery services” in International Class 42.[fn1]Page 2
The trademark examining attorney refused registration under Section 2(e)(1) of the Trademark Act on the ground that applicant’s mark is merely descriptive of a feature or quality of applicant’s services.
When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs on the issue under appeal.
Before turning to the substantive ground for refusal, we note that applicant has submitted several exhibits with its brief. These exhibits consist of printouts from third-party Internet websites; a definition from the Wikipedia online dictionary; and a copy of a third-party registration from the United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS). We agree with the examining attorney that these exhibits are untimely, and they have not been considered. See Trademark Rule 2.142(d) (the record in the application should be complete prior to the filing of an appeal). In addition, we note that while the Board will take judicial notice of online dictionaries available in printed format, we will not take judicial notice of online information sources such as Wikipedia. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). We observe, in any event, that hadPage 3
we considered these exhibits in our determination of the issue on appeal, the result would be the same.
Applicant contends that the evidence made of record by the examining attorney refers to a type of computing known as “grid computing,” which involves “using the computing powers of many computers to analyze, generate and process large amounts of data,”[fn2] usually academic or scientific in nature; but that its mark SIMPLEGRID and the services it identifies are not related to grid computing. Applicant made of record with its response to the examining attorney’s first Office action the following online encyclopedia reference for “grid computing:”
(or the use of computational grids) is the combination of computer resources from multiple administrative domains applied to a common task, usually to a scientific, technical or business problem that requires a great number of computer processing cycles or the need to process large amounts of data. ? It is a form of distributed computing whereby a `super and virtual computer’ is composed of a cluster of networked loosely coupled computers acting in concert to perform very large tasks. ?[fn3]
Applicant also contends that “grid” has numerous nontechnical meanings. Applicant further contends that SIMPLEGRID “does not convey an immediate idea of whatPage 4
services may be provided”[fn4] and that the examining attorney’s evidence of “one instance of a technical protocol with a similar naming scheme does not mean that the term SIMPLEGRID is known to reference grid computing.”[fn5] Based upon the foregoing, applicant contends that its mark “SIMPLEGRID does not immediately describe the qualities or characteristics of the services listed in its application.”[fn6]
The examining attorney maintains that “the term SIMPLEGRID is a term of art in the computer industry. It describes a type of grid computing package.”[fn7] In support of this position, the examining attorney submitted with her first Office action the following online encyclopedia reference for “simple grid protocol:”
A Freeware grid computing package. Developed
maintained by Brendan Kosowski, the package includes the protocol software tools needed to get a computational grid up and running on Linux BSD. Based on CLISP (a Common Lisp Implementation), Simple Grid Protocol allowsPage 5
computer programs to utilize the unused CPU resources of other computers on a network or the Internet.[fn8]
The examining attorney further submitted a printout containing the following information from an informational Internet website:
Simple Grid Protocol 1.02 Grid Computing package for Linux/BSD Features
Allows computer programs to utilize the unused CPU resources of other computers on a network or the Internet.
Free
Written in CLISP (a small, fast
portable Common Lisp with excellent networking capabilities).[fn9]
Based upon this evidence, the examining attorney argues that “computer software, integration, remote monitoring and disaster recovery services could use simplegrid technology in rendering these services.”[fn10]
The examining attorney further relies upon the following statement in applicant’s brief in support of her position that “applicant concedes that SIMPLEGRID is descriptive.”[fn11]
Computer experts would immediately associate the term simplegrid with grid computing and specifically with the Simple Grid Protocol, which is a specific implementation not widely used. ? Applicant’s normal customer would not draw any connection between simplegrid and grid computingPage 6
or the Simple Grid Protocol as Applicant’s customers are usually law-firms and other nontechnical businesses with technical network support needs.[fn12]
In addition, the examining attorney points to applicant’s specimen of record to support her position that “since applicant touts itself as a computer expert, it is likely that it will be using simple grid technology in rendering their computer services.”[fn13] Thus, the examining attorney argues:
A consumer would believe that applicant utilizes all available computer technologies in delivering its services to its customers, including simple grid protocols. As applicant admitted, consumers knowledgeable about computer systems, computer integration and monitoring would know about SIMPLEGRID software. When seeing applicant’s mark used in connection with its computer services, consumers familiar with the service would immediately know the type of software or protocol applicant is using.[fn14]
It is well settled that a term is considered to be merely descriptive of goods and/or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services.See Section 2(e)(1) of thePage 7
Trademark Act, 15 U.S.C. ? 1052. See also In reAbcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods and/or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or feature about them. Moreover, whether a term is merely descriptive is determined not in the abstract, but in relation to the goods and/or services for which registration is sought. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers could guess what the product is from consideration of the mark alone is not the test.” In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
In the instant case, the evidence made of record by the examining attorney is insufficient to support a finding that, as applied to applicant’s services, the mark SIMPLEGRID would immediately describe, without conjecture or speculation, a significant characteristic or feature of applicant’s computer hardware and software consulting, integration, monitoring and disaster recovery services, namely, that they utilize the grid computing package known as “simple grid protocol.” While the evidence of record suggests that the term “simple grid protocol” possesses aPage 8
meaning in the computer software field, there is no evidence that SIMPLEGRID has the same meaning as “simple grid protocol” or that SIMPLEGRID, by itself, has any recognized meaning. Further, there is no evidence that applicant utilizes “simple grid protocol” in the rendering of its computer services. Applicant’s statement in its brief that experts in the computer field would associate SIMPLEGRID with grid computing and the “simple grid protocol” falls far short of an admission that SIMPLEGRID merely describes its recited services. In the absence of any such evidence or clear admissions on the part of applicant, we find the examining attorney’s arguments[fn15] too speculative to support a finding of mere descriptiveness.
In short, the evidence submitted by the examining attorney is insufficient to demonstrate that SIMPLEGRID merely describes a feature or characteristic of applicant’s recited services.
Finally, if doubt exists as to whether a term is merely descriptive, it is the practice of this Board to resolve doubts in favor of the applicant and pass the application to publication. See In re Gourmet Bakers Inc.,Page 9
173 USPQ 565 (TTAB 1972). In this way, anyone who believes that the term is, in fact, descriptive, may oppose and present evidence on this issue to the Board.
Decision: The examining attorney’s refusal of registration is reversed. Accordingly, the involved application will be forwarded for registration in due course.
[fn1] Application Serial No. 77709074 was filed on April 7, 2009, based on applicant’s assertion of March 1, 2009 as a date of first use of the mark in commerce in connection with the services. [fn2] Applicant’s brief, p. 6. [fn3] En.wikipedia.org/wiki/Grid_computing [fn4] Id. at 8. [fn5] Id. [fn6] Applicant, in its brief, offers to make the following amendment to its recitation of services: “computer hardware and software consulting services; integration of computer systems and networks; computer services, namely, remote network andsystem monitoring and data and network disaster recovery services.” The request to amend is denied. The amendment is not only untimely, but was not properly made by a separate request for a remand. See In re Major LeagueUmpires, 60 USPQ2d 1059, 1060 (TTAB 2001). In any event, we do not find “good cause” for remand. 37 CFR ? 2.142(d); TBMP ? 1207.02 (4th ed. 2004). Furthermore, the amendment would not change our determination of the refusal to register that is the subject of the instant appeal. [fn7] Examining attorney’s brief, unnumbered page 4. [fn8] En.wikipedia.org/wiki/Simple_Grid_Protocol [fn9] grid.bmk.com.au [fn10] Examining attorney’s brief, p. 4-5. [fn11] Id. at 5. [fn12] Applicant’s brief, p. 8. [fn13] Examining attorney’s brief, p. 5. [fn14] Id. at 6. [fn15] The examining attorney asserts in her brief that because applicant provides expert computer services, “it is likely that it will be using simple grid technology in rendering its services.” Id. at 5.