VIRUSSCAN refusal fixed by TTAB

In In re Network Associates Technology, the Trademark Trial and Appeal Board (TTAB), in a non-precedential opinion, has reversed a US Patent and Trademark Office examiner's refusal to register Network Associates Technology's (NAT) VIRUSSCAN mark as generic for software used to combat computer viruses.

The VIRUSSCAN mark was refused registration as generic based on numerous references from the Nexis database showing the term 'virus scan' as well as references to the term in certain online dictionaries of computer terms. On appeal, NAT submitted evidence of:

  • third-party registrations of marks including the word 'scan';

  • sales and advertising figures for its software bearing the mark;

  • declarations as to its number of customers and the lack of third-party users; and

  • a survey.

The survey asked 110 persons responsible for making software purchases for their companies to name the "type or category of computer software that is designed to protect and secure data, software and computer communications networks". In a separate question, respondents were then asked to supply any other name or names for referring to this type or category of software. Only one person responded "virus scan" and one person responded "virus protection scan". The most prevalent responses pertained to firewall software.

Even though the TTAB believed it had "reason to question the persuasiveness of the survey", it relied on it as another piece of evidence rebutting the examiner's prima facie showing of genericness. Specifically, the TTAB recognized that the respondents to the survey were led to provide the response "firewall", which established a generic name for a product not at issue. Even though the survey was thus considered to be "not very relevant", the TTAB reasoned that it was required to "give it some weight". The TTAB thus viewed the survey evidence in combination with (i) the lack of evidence of use of the term by competitors and retailers, and (ii) the absence of the term from many general and technical dictionaries. Constrained as it was by the limited ex parte record, the TTAB was "unable to conclude that the evidence clearly shows that applicant's mark is generic". Thus, the genericness refusal was reversed.

Having concluded that the record failed to satisfy the test for genericness, the TTAB then viewed the evidence of sales, advertising and number of users of NAT's software to determine that the mark had acquired distinctiveness and was therefore entitled to registration on the principal register.

Karin Segall, Darby & Darby, New York

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