Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE TIME SOLUTIONS INC.
Serial No. 74/264,399
October 26, 1994
Original Release: September 19, 1994
Barbara S. Hudson
Trademark Examining Attorney
Law Office 3
(Kathryn Dobbs, Managing Attorney)
Before Rice, Simms, and Quinn
Administrative Trademark Judges
Opinion by Rice
Administrative Trademark Judge
An application has been filed by Time Solutions Inc. to register the mark YOUR HEALTH INSURANCE MANAGER for software programs for personal record keeping and processing of medical records, health insurance and claims. [FN1]
Registration has been finally refused under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. 1052(e)(1), on the ground that applicant's mark, as applied to its goods, is merely descriptive of them. Applicant has appealed.
In support of the refusal to register, the Examining Attorney relies upon certain dictionary definitions, namely, a definition, from Webster's Ninth New Collegiate Dictionary (1990), of the noun "manager" as "one that manages"; [FN2] and a definition, from Microsoft Press Computer Dictionary (1991), of the same term as follows"
In general, any program that is designed to perform a certain set of 'housekeeping' tasks related to computer operation--for example, the maintenance of files.
On the Apple Macintosh, Manager (with a capital M) is used in the names of various separate portions of the computer's operating system that handle input, output, and internal functions. Among these are File Manager, Font Manager, AppleTalk Manager, Memory Manager, Window Manager, Menu Manager, and so on. For example, the File Manager handles requests to open and close files, keeps a list of the names of mounted disks, and so on; the Font Manager keeps a list of the available fonts and returns information about the available font sizes loaded in the System File, among other things; and the AppleTalk Manager arbitrates input and output over the AppleTalk network.
The Examining Attorney also relies upon a definition, again from Microsoft Press Computer Dictionary, of the term "housekeeping" as follows:
Any of various routines designed to keep the system, the environment within which a program runs, or the data structures within a program itself in good working order. Housekeeping routines include periodically updating the clock, compacting the heap, and deallocating memory that is no longer needed.
In addition, the Examining Attorney points to a piece of promotional literature submitted by applicant. The text describes applicant's involved goods as "new PC software to manage your medical records and health insurance." Specifically, applicant's software, according to the text, files and tracks claims; prints claim forms; "organizes your medical records--family members, policies, providers, and expenses"; "makes quick comprehensive comparisons of health insurance policies"; "helps you understand your health insurance": and "maintains your family's immunization and health histories."
*2 Applicant maintains that the computer dictionary definition of "manager" cited by the Examining Attorney does not define the operations performed by applicant's software programs; that the definition refers to "any program that is designed to perform a certain set of housekeeping tasks related to computer operation"; that applicant's software programs are not housekeeping routines related to the operation of a computer, but rather are data processing routines which perform such functions as printing claim forms, tracking claims, comparing policies, organizing medical and insurance records, etc.; and that the fact that the Examining Attorney attributed to the mark a meaning that it does not have (i.e., the cited computer dictionary meaning of "manager") shows that its mark is suggestive rather than merely descriptive.
The Examining Attorney, in response thereto, contends that even if the "everyday" (i.e., Webster's) definition of manager as "one who manages" is used, applicant's mark is merely descriptive because applicant's product, as described in applicant's own advertising, consists of "new PC software to manage your medical records and health insurance"; that, with reference to the computer dictionary definitions, a file manager performs management or housekeeping functions regarding files in much the same way that applicant's software performs various housekeeping functions regarding personal health insurance records; that therefore, using either dictionary definition of "manager," applicant's software performs the job of a manager; and that applicant's mark is merely descriptive of applicant's goods because it describes the primary function thereof.
A mark is merely descriptive if, as used in connection with the goods or services in question, it describes, i.e., immediately conveys information about, an ingredient, quality, characteristic, use, function, purpose, attribute, feature, etc. thereof. See: In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re American Screen Process Equipment Co., 175 USPQ 561 (TTAB 1972). The question of whether a mark is merely descriptive must be determined not in the abstract but rather in relation to the goods/services for which registration is sought, including the context in which the mark is used on the goods/services or in advertising therefor, and the possible significance that the mark would have, seen in such context, to the average purchaser of the goods/services. See: In re Abcor Development Corp., supra, and In re Nibco Inc., 195 USPQ 180 (TTAB 1977).
In the present case, it is clear both from applicant's identification of goods ("software programs for personal record keeping and processing of medical records, health insurance and claims") and from applicant's advertising that the goods are sold to the general consuming public. Although many consumers may be unfamiliar with the technical, that is, the computer dictionary, meaning of the word "manager," they will certainly know what the Examining Attorney refers to as the "everyday" meaning of the term, as reflected in the Webster's definition. When consumers encounter applicant's mark, YOUR HEALTH INSURANCE MANAGER, used in the context of applicant's advertising, which describes applicant's goods as "new PC software to manage your medical records and health insurance" and lists the various tasks performed by the software programs, as recited above, we have no doubt that the mark will immediately convey to them information concerning a significant feature or function of applicant's programs, namely, that they manage, i.e., handle with skill, personal health insurance matters.
*3 Accordingly, we agree with the Examining Attorney's conclusion that applicant's mark, as applied to its goods, is merely descriptive of them.
Decision: The refusal to register is affirmed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/264,399 filed April 10, 1992, claiming first use and first use in commerce since at least as early as June 1991.
FN2. We take judicial notice of the fact that the same dictionary defines the verb "manage" as, inter alia, "to handle or direct with a degree of skill or address...."