UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	Hypercom Corporation	:	BEFORE THE
Trademark:	SECURITY BIOMETRICS	:	TRADEMARK TRIAL
Serial No:	76-424261	:	AND
Attorney:	Laura J. Zemen, Esq.	:	APPEAL BOARD
Address:	Snell & Wilmer, L.L.P. One Arizona Center 400 East Van Buren Phoenix, Arizona 85004-2202	:	ON APPEAL

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

 

FACTS

 

Applicant filed the instant application serial number 76-424261 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.”  In the first Office action dated November 4, 2002, the Examining Attorney refused registration under Trademark Act Section 2(e)(1) on the grounds that the applied-for mark is merely descriptive of the goods identified in the application.  Applicant’s response of May 5, 2003 set forth arguments in favor of registration.  The Examining Attorney made final the refusal to register under Section 2(e)(1) in an Office action dated July 23, 2003.  By notice of appeal filed on March 23, 2004, Applicant appealed the refusal to register under Section 2(e)(1) of the Trademark Act.

ARGUMENT

SECURITY BIOMETRICS MERELY DESCRIBES A FEATURE AND PURPOSE OF APPLICANT’S GOODS

 

The sole issue on appeal is whether the wording “SECURITY BIOMETRICS” immediately describes a feature and purpose of “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.” 

 

In the instant application, Applicant has combined two descriptive terms to form its intended mark.  However, the combination does not result in any incongruity. Rather, Applicant has combined the descriptive words for their descriptive meaning.  The resulting mark, SECURITY BIOMETRICS, describes 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. 

 

SECURITY IS DESCRIPTIVE OF THE PURPOSE OF APPLICANT’S COMPUTER HARDWARE AND SOFTWARE

 

In the first Office Action, the Examining Attorney asserted (and the Applicant did not deny in its response), that the goods identify and verify the identity of individuals for security purposes.  Instead, it its response, 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.  Yet, Applicant also argues in its Brief that potential consumers would see the mark and believe that “…business and personal information of the consumer will remain secure (emphasis added) from others….”  Appellant’s Brief at pp. 3.  Notwithstanding Applicant’s contradictory positions, the examining attorney must consider descriptiveness in relation to the relevant goods or services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.Cir. 1987).  To suggest that a potential consumer may understand the mark to mean one thing and not the other is not a dispositive factor, in this instance.  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 controlling question in this case is whether the wording “SECURITY” is descriptive of an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009(Fed. Cir. 1987); TMEP 1209.01(b).  The use of biometric data within the system, described in detail below, provides a means of secure authentication.  Thus, the word “SECURITY is descriptive of the purpose of the goods. 

 

BIOMETRICS IS DESCRIPTIVE OF A FEATURE OF APPLICANT’S HARDWARE AND SOFTWARE

The remaining issue is whether the word BIOMETRICS in Applicant’s mark is descriptive of a feature of Applicant’s 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.

 

In its explanation of the goods at issue, Applicant contends that its goods include terminals equipped with fingerprint scanners, authorizer database servers, root database servers, and software that utilize the data from the terminals, scanners, and servers.  Applicant goes on to explain how biometric [emphasis added] identification information is added to financial transactions.  Response to Office action, dated May 5, 2003, pp.2.  Applicant’s argument in its Brief that the mark is suggestive is simply not persuasive.  In Applicant’s Response of May 5, 2003, Applicant readily admits that the goods utilize biometric data.  Applicant’s Response to Office Action, pp. 2.  Applicant’s identification of goods clearly states that the goods verify the identity of individuals using fingerprint, voice, eye and facial feature data.  And, in return, the Examining Attorney has included numerous definitions already of record that show that the definition of “biometric” refers to technologies for measuring and analyzing human body characteristics such as fingerprints, eye retinas, and irises, voice patterns, facial patterns, and hand measurements, especially for authentication purposes.  See e.g., SearchSecurity.com definition, included with the final Office action dated July 23, 2003.   Therefore, Applicant’s goods clearly utilize BIOMETRIC data.

 

APPLICANT’S MARK IS COMPRISED OF DESCRIPTIVE TERMS THAT DO NOT CREATE A UNITARY MARK WITH A SEPARATE, NONDESCRIPTIVE MEANING

 

Applicant argues that the Examining Attorney has improperly dissected the mark into component parts and applied its analysis to the components.  Brief for Appellant at pp. 2-3.  Contrary to Applicant’s assertion, the Examining Attorney has examined the mark in its entirety throughout the prosecution of the instant application.  The Examining Attorney has provided reasonable analysis, accompanied by relevant evidence, to establish that the intended mark is merely descriptive of the identified goods.  It is true that a mark that combines descriptive terms may be registrable if the composite creates a unitary mark with separate, nondescriptive meaning.  In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985).  However, combining two descriptive terms is insufficient to accomplish that goal unless the combination is such as to create a new and different commercial impression from that which is engendered by the separate components.  See, e.g., In re Quik-Print Copy Shop, Inc.., 205 USPQ 505 (CCPA 1980), where QUIK-PRINT, a combination of the descriptive terms, “QUICK,” identifying the speed of

service, and “PRINT,” identifying the nature of the services, was found merely descriptive of printing, photocopying, collating, binding, cutting, drilling, folding, padding, stapling, and perforating services).

 

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. 

 

CONCLUSION

For the foregoing reasons, the Examining Attorney respectfully maintains that the mark is merely descriptive of the identified goods, and urges that the refusal to register on the Principal Register under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052 (e)(1) should be affirmed.

 

                                                                                                                                                                                                                                                                                                Respectfully submitted,

/Caroline Fong Weimer/

Examining Attorney

Law Office 115

703-308-9115 x211

                                                                                                                                                                                                                         Tom Vlcek, Managing Attorney

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

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 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.