Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/424261

 

This letter responds to the applicant’s communication filed on May 5, 2003.

 

Mark is Merely Descriptive

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods/services.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.

 

The applicant has applied to register the mark SECURITY BIOMETRICS for computer hardware and software for use with identification systems and point-of-sale transaction systems for identifying and verifying identity of individuals using fingerprint, voice, eye and facial feature data.

 

The registration of a term created by combining two or more unregistrable words depends on whether in combination, a new and different commercial impression is created, and/or the term so created imparts a bizarre or incongruous meaning as used in connection with the goods or services.  In re Associated Theatre Clubs Co., 9 USPQ2d 1660 (TTAB 1988);  In re Metcal Inc.,  1 USPQ 2d 1334 (TTAB 1986);  In re Quik-Print Copy Shop, Inc.,  205 USPQ 505 (CCPA 1980). 

 

In the first Office Action to Applicant, the undersigned Examining Attorney asserted, and the Applicant did not deny this in its reply, that the goods identify and verify the identity of individuals for security purposes.  Instead, it its reply, Applicant asserts that “SECURE” has several dictionary meanings, and thus argues that “SECURITY” cannot be merely descriptive of its goods.  See Applicant’s Response dated May 5, 2003, page 3.  Notwithstanding Applicant’s position, the examining attorney must consider descriptiveness in relation to the relevant goods or services.  The fact that a term may have different meanings in another context is not controlling on the question of descriptiveness.  In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979).  TMEP §1209.03(e). The use of biometric data within the system provides a means of secure authentication.  Thus, the word “SECURITY is descriptive of the purpose of the goods. 

 

Applicant goes on to argue, “even if one of the elements may be descriptive, the combination of two or more allegedly descriptive elements in a composite mark often results in a composite which is non-descriptive.”  See Applicant’s Response dated May 5, 2003, page 3.  While Applicant’s statement of the law is correct, its application to the facts at hand is not.  The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b).  In this case, Applicant makes clear that its goods are “for use with identification systems and point-of-sale transaction systems for identifying and verifying identity of individuals using fingerprint, voice, eye and facial feature data.”  The enclosed definitions of “BIOMETRIC” define “biometric” as technology that uses fingerprint, voice, eye and facial feature data for identification purposes.  See the enclosed website evidence. 

 

In this case, there is no incongruity, and no imagination is needed to figure out exactly the nature of the goods.  Where the combination of descriptive words creates no incongruity, and no imagination is required to understand the nature of the goods, the mark remains merely descriptive.  In re Associated Theatre Clubs Co.,  9 USPQ2D 1660 (TTAB 1988);  In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977);  In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).  When viewed in context, it is clear that Applicant’s goods utilize biometrics for security purposes.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).  The refusal to register the mark under Section 2(e)(1) is continued and made FINAL. 

 

Options

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

/Caroline Fong Weimer/

Examining Attorney

Law Office 115

(703) 308-9115 ext. 211

(703) 746-6179 (FAX)

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.