Tuesday, December 26, 2006

Citable No. 54: "ESERVER" Generic for Computer Network Products, Says TTAB

In its 54th citable decision of 2006 (tripling last year's output of citable decisions), the Board affirmed a genericness refusal of ESERVER for "computer network access products, namely, computer hardware and operating software therefor that allow connectivity to and the administration of public and proprietary computer networks and the processing of information contained thereon. " In re International Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006).

Applicant IBM maintained that the PTO failed to meet its burden to show that ESERVER is generic by clear evidence of generic use. The Board, however, ruled that Examining Attorney Tarah Hardy Ludlow established a prima facie case of genericness by submitted evidence that was "significant in quantity." It included "strong evidence from a variety of sorurces" that an "eserver" is a category or sub-genus of a server: i.e., a server with Internet applications.

"Although some of the examining attorney's evidence shows trademark use by applicant and possibly by third parties, and some of her evidence may actually be discussing applicant's ESERVER product, on the totality of the evidence ... we find that she has established prima facie that members of the relevant public primarily use or understand "eserver" to be a reference to this sub-genus of goods."

Applicant IBM's challenge to the PTO's evidence was "not persuasive." Furthermore, IBM's evidence of acquired distinctiveness did not overcome the PTO's prima facie case. [Of course, such evidence cannot convert a generic term into a registrable mark, but the Board considered the evidence in connection with the issue of whether the term was generic in the first place].

"Evidence of generic use and proper trademark use by applicant does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness. It would be fairly easy for a well-heeled applicant to ensure that its web site and promotional materials, and even articles in the press regarding its products, properly use the applicant's mark. However, in this case, the significant evidence of generic use is not offset by applicant's evidence that shows proper trademark use by applicant and articles regarding applicant's servers."
The Board therefore affirmed the refusal.

TTABlog note: Compare this decision with the recent, citable descision regarding the mark CERTIFIED THERAPEUTIC RECREATION SPECIALIST (TTABlogged here). There, the PTO's evidence of genericness was "offset" by Applicant's evidence of proper usage and, because of this "mixed" record, the PTO fell short of the "clear evidence" standard.

Text Copyright John L. Welch 2006.


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