Thursday, December 23, 2010

TTAB Affirms Refusal of "MTS TESTSUITE" - Applicant Failed to Comply with Disclaimer Requirement

Applicant MTS Systems put up a good battle but lost this disclaimer war. The Board affirmed a refusal to register the mark MTS TESTSUITE under Section 6(a) because MTS refused to disclaim the term "TESTSUITE." The Examining Attorney maintained that TESTSUITE is merely descriptive for MTS's goods: software for controlling equipment, which software "performs data analysis and generates reports about a physical specimen." The Board agreed, not because of the Examining Attorney's evidence but because of its own. In re MTS Systems Corporation, Serial No. 77702458 (December 6, 2010) [not precedential].

The Examining Attorney relied on website excerperts and a Wikipedia entry, in which "test suite" appears descriptively in connection with software used to test other computer programs. MTS argued that its software is different: it is "utilized along with testing equipment to determine characteristics of [a] physical specimen."

The Board recognized, but was unfazed by, that difference. It simply took judicial notice of dictionary definitions of TEST ("a means of testing") and SUITE ["a set of computer programs designed to work together and usually sold as a unit."].

Based on the dictionary definitions alone, set forth above, the word TEST clearly and unambiguously describes a significant feature of the software, namely, that it is software used in connection with testing. The word SUITE describes another feature which is that it is a set of software programs to be "utilized along with testing equipment to determine characteristics of [a] physical specimen." *** Regardless of what is being tested, whether computer programs or, in applicant’s case, physical equipment, the term TESTSUITE is descriptive of a suite of software programs used for testing.

The Board therefore affirmed the refusal but gave MTS thirty days to submit the required disclaimer.

TTABlog comment: It's one thing for the Board to take judicial notice when asked. Here, it wasn't asked. It appears that MTS never had the chance to argue against the Board's use of those two definitions. How fair is that?

Text Copyright John L. Welch 2010.


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