Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DIGITAL RESEARCH INC.
Serial Nos. 481,883 and 481,894
April 17, 1987
David E. Lovejoy and Fliesler, Dubb, Meyer & Lovejoy for applicant
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Rice, Allen and Rooney
Opinion by Rice
Applications have been filed by Digital Research Inc. to register the designations 'CONCURRENT PC-DOS' [FN1] and 'CONCURRENT DOS' [FN2] for 'computer programs recorded on disk,' use since March 7, 1984 being asserted in each instance.
In each application, registration has been refused under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. 1052(e)(1), on the ground that the designation sought to be registered therein, when applied to the goods of the applicant, is merely descriptive of them; and under Section 2(d), 15 U.S.C. 1052(d), on the ground that the designation sought to be registered so resembles the mark 'CONCURRENT TECHNOLOGIES CORPORATION,' previously registered for electronic hardware, namely, printed electronic circuit boards, [FN3] as to be likely, when applied to the goods of the applicant, to cause confusion, mistake, or deception. Inasmuch as the two cases involve similar issues, they are being considered together in this single opinion.
Turning first to the refusal to register under Section 2(e)(1), it is well settled that a term is merely descriptive if, as applied to the goods or services in question, it describes an ingredient, quality, characteristic, function, feature, composition, purpose, attribute, use, etc. of such goods or services. See: In re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978); In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972); In re Universal Water Systems, Inc., 209 USPQ 165 (TTAB 1980); and cases cited therein.
The question of whether a particular term 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 mark is used, and the significance that the mark is likely to have, because of the manner in which it is used, to the average purchaser as he encounters goods bearing the mark in the marketplace. See: In re Abcor Development Corp., supra; In re Nibco Inc., 195 USPQ 180 (TTAB 1977); and cases cited therein. Further, as stated by the Board in In re International Spike, Inc., 190 USPQ 505 (TTAB 1976), at page 507:
It follows as a necessary corollary of the foregoing, that although a term at its inception or adoption may have been arbitrary or even suggestive in character, it may thereafter through use in a descriptive sense over a period of time lose its distinguishing and origin denoting characteristics and be regarded by the relevant section of the purchasing public as nothing more than a descriptive designation describing rather than identifying the goods on which it has been used. See DeWalt, Inc. v. Magna Power Tool Corp., 129 USPQ 275 (CCPA 1961).
*2 In the present case, the Examining Attorney has made of record copies of certain dictionary definitions, namely, a definition from the Computer Dictionary for Beginners of the designation 'PC DOS' as 'A CP/M-like operating system for the IBM Personal Computer, developed for IBM by MicroSoft. Also called MDOS, MSDOS, IBM DOS and--by IBM itself--simply DOS'; together with the following definition from The American Computer Dictionary of the designation 'concurrent execution':
The ability of a computer system to have two or more separate and unrelated programs running at the same time. The CPU works on a program for a time, then sets it aside and works on another, etc. Eventually, it returns to the first program and picks up where it left off. This is made possible by the fact that a CPU processes data much faster than its peripherals operate. Also called multiprogramming.
Also made of record by the Examining Attorney are copies of a substantial number of printouts of portions of articles, from Mead Data Central's NEXIS computerized library of information, showing that the term 'concurrent' is used descriptively in the computer field. Examples of such use include the following (with the term 'concurrent' emphasized by us):
1. Business Wire, July 15, 1985: 'Flexible Computer Corp. of Dallas announced Monday . . . a new product for its Flex/32 MultiComputer, the high-level Ada programming language . . .. The Ada language is another enhancement to the FLEX/32's concurrent software tools and parallel hardware architecture. The FLEX/32's concurrent software tools include . . ..'
2. Computerworld, July 15, 1985: 'CRI, Inc. has announced Release 4.5 of Relate/3000, a rational data base management system and fourth-generation language for Hewlett-Packard Co. HP 3000 systems. Enhancements to the product include . . . improvements to concurrent, multiuser access functions . . ..'
3. Electronics, July 15, 1985: 'The Flex/32 Ada concurrent-processing development system is based on a . . .. The Flex/32 hardware is based on the 32032 microprocessor family from National Semiconductor Corp. and has been designed to exploit concurrent operation on multiple, independent computers with parallel data bases . . .. As with Flexible Computer's other concurrent languages, the system executes Ada program development under Unix System V. A concurrency simulator package then . . ..'
4. Computerworld, April 7, 1986: 'IBM has replaced its standard 3278/3279 emulation card for the Personal Computer family with a less expensive short-card model . . .. The card supports multiple concurrent 3270 sessions or concurrent 3270 and PC-DOS sessions.'
Others of the articles refer to applicant's product in particular. Examples of these are given below:
1. Byte, July 1984: 'Digital Research introduced Starlink, a $1695 expansion board for the IBM PC allowing you to link four terminals to the IBM PC using standard RS-232C cables. Starlink includes a version of Concurrent PC-DOS that allows that PC user to run up to four MS-DOS or CP/M-86 applications concurrently in addition to the program used on each terminal.'
*3 2. Computerworld, May 14, 1984: 'Accepting rather than fighting the emergence of IBM's PC-DOS operating system as a de facto microcomputer operating system standard, Digital Research, Inc. last week announced Concurrent PC-DOS, which allows users of the IBM Personal Computer to run four programs simultaneously using PC-DOS and/or Digital Research's CP/M operating systems . . . . In addition to offering concurrent capabilities, Digital Research plans to . . . .'
3. Computerworld, July 16, 1984: 'AT&T has announced plans to offer Digital Research, Inc.'s Concurrent PC-DOS for the AT&T Personal Computer 6300 . . . . Both AT&T and Digital Research officials emphasized the benefits of concurrent, multitasking operations and said that Concurrent PC-DOS would provide a bridge between today's personal computers and the more powerful multiuser systems.'
4. Business Wire, June 12, 1985: 'American Spectrum Marketing Corp. announced Wednesday it has acquired a micro-minicomputer communications software package . . .. American PC-Term is a state-of-the-art communications software product optimized to work best within the concurrent operating system such as UNIX and Digital Research's Concurrent PC-DOS.'
5. InfoWorld, August 6, 1984: 'At the same meeting, it was announced that DRI's Concurrent PC-DOS will be offered by AT&T for the 6300. Concurrent PC- DOS allows four PC-DOS or CP/M applications to run at the same time. With a concurrent operating system, a single user can edit a document while sending data to another computer.'
In the face of the foregoing evidence, applicant argues in essence that the designations 'CONCURRENT PC-DOS' and 'CONCURRENT DOS' are not merely descriptive as applied to its system because the system does not actually permit 'concurrent' operation in the dictionary sense of 'at the same time,' but rather executes functions sequentially in extremely rapid fashion, producing the appearance of concurrent execution to the user.
However, we fully agree with the Examining Attorney's responding argument, at pages 11-12 of his brief on appeal, that:
It is apparent from the attached materials that applicant's goods, as well as other similar products, are generally referred to within the relevant trade as 'concurrent' operating systems. Whether or not anything is actually done 'concurrently,' in the abstract sense, is immaterial since the relevant trade clearly utilizes the denomination 'concurrent' as a descriptor of this particular type of operating system.
Under the circumstances, and since applicant does not deny that 'PC-DOS' and 'DOS' are generic terms denoting a particular type of computer operating system, we have no doubt that the designations 'CONCURRENT PC-DOS' and 'CONCURRENT DOS', when applied to applicant's computer programs, are merely descriptive of them within the meaning of Section 2(e)(1) of the Act.
This brings us to the refusal to register under Section 2(d). Comparing first the goods of applicant and registrant, applicant's goods are identified as 'computer programs recorded on disk,' while the goods specified in registrant's registration are 'electronic hardware-namely, printed electronic circuit boards.' These goods are specifically different. However, goods and/or services need not be identical or competitive in order to support a finding of likelihood of confusion, it being sufficient for the purpose that they are related in some way or are marketed in such a manner that they would likely be encountered by the same purchasers under circumstances that would lead such purchasers to assume that they have a common source. See: Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978), and Mobay Chemical Co. v. Standard Oil Co., 163 USPQ 230 (TTAB 1969).
*4 The record in this case contains 'NEXIS' evidence indicating that a number of companies (including, apparently, applicant) sell software 'upgrade' packages to computer users. These packages include, inter alia, printed circuit boards. According to applicant,
. . . in each instance what is being sold is a software package which utilizes computer programs that are partially embodied in a physical device. The software package being purchased, in addition to including software in, for example, disc form, also typically includes software in hardware form (that is, firmware). The purchaser, in order to use the software, must also install the firmware. The firmware is attached to a printed circuit board. Generally, it will include software instructions committed to a ROM, which software instructions have been made operationally permanent by storage in a type of hardware, for example by attaching the ROM to a printed circuit board.
Applicant argues that printed circuit boards, per se, are a form of hardware generally bought by computer manufacturers and hidden within computers; that such printed circuit boards, per se, are not generally firmware, that is, they are generally not computer programs that are embodied in a physical device; that any printed circuit boards which are part of applicant's product and/or competitive products are part of an overall software package and serve as the firmware portion thereof; and that, accordingly, both the products here involved and the avenues of trade therefor are significantly different.
The question of likelihood of confusion in a proceeding such as this must be determined on the basis of a comparison of the goods set forth in applicant's application vis-a-vis the goods recited in registrant's registration. In view thereof, and since the identification of goods in the cited registration is simply 'electronic hardware-namely, printed electronic circuit boards,' without any limitations as to type, uses, channels of trade, or classes of purchasers, we must presume for purposes herein that registrant's goods include printed electronic circuit boards of all types, including printed circuit boards for use in software packages. See: In re Davis-Cleaver Produce Co., 197 USPQ 248 (TTAB 1977); In re Optica International, 196 USPQ 775 (TTAB 1977); In re Tudor House, Inc., 177 USPQ 604 (TTAB 1973); and cases cited in the foregoing. Indeed, applicant's own arguments are heavily qualified by applicant's repeated use of the term 'generally,' implying that at times the factual situation is other than that asserted by applicant. Accordingly, we conclude that the involved goods of applicant and registrant could well be encountered by the same purchasers under circumstances that would lead the purchasers to assume that they have a common source if they bore the same or similar marks.
Turning then to the marks, we note that registrant's mark, 'CONCURRENT TECHNOLOGIES CORPORATION,' is registered on the Principal Register with a disclaimer of the descriptive words 'Technologies Corporation.' In view thereof, and considering the descriptive nature of the words 'Technologies Corporation,' we must presume that the word 'CONNCURRENT,' which is the first word in registrant's mark and is undisclaimed, serves as the primary origin-indicating feature of the mark as a whole. Moreover, it is not uncommon for a corporation to use the first and salient feature of its trade name as a trademark for its goods or services, with or without descriptive terminology for the goods or services. Under the circumstances, and since the terms 'DOS' and 'PC-DOS' in applicant's marks are generic terms as applied to applicant's goods, we are of the opinion that the contemporaneous use by applicant and registrant of their respective marks (considered as wholes) in connection with their involved goods is likely to cause confusion, mistake, or deception. While we candidly admit that this is a close question, any doubts that we may have on the matter must be resolved in favor of registrant. See: In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
*5 Decision: The refusal to register is affirmed on both grounds in both applications.
J. E. Rice
D. B. Allen
L. E. Rooney
Members, Trademark Trial and Appeal Board
FN1. Serial No. 481,883, filed May 24, 1984.
FN2. Serial No. 481,894, filed May 24, 1984.