John M. Floyd & Associates, Inc.

Trademark Trial and Appeal Board

Aug 9, 2006

No. 78259782 (T.T.A.B. Aug. 9, 2006)

Mailed:
August 9, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John M. Floyd & Associates, Inc.
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Serial No. 78259782
_______

Daniel N. Lundeen of Lundeen & Dickinson, LLP for John M.
Floyd & Associates, Inc.

John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

John M. Floyd & Associates, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register PRIVILEGE MANAGER MRM as a trademark for “computer
software for use in providing management reports, custom
reports and account holder communications for financial
institutions in connection with the supervision of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78259782
2
overdrawn accounts and customer relations.”1 Applicant
states that MRM has been disclaimed. We note that Office
records do not indicate such a disclaimer, although in its
request for reconsideration, dated July 26, 2005, applicant
states that MRM “has been disclaimed,” and in its reply
brief, at p. 8, applicant has reiterated that MRM has been
disclaimed. Accordingly, we have treated the application
as including a disclaimer of MRM, and have arranged to
enter such disclaimer in USPTO records.
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark is merely descriptive of its
identified goods.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the

1 Application Serial No. 78259782, filed June 9, 2003, based on
Section 1(b) of the Trademark Act (intent-to-use). It is noted
that applicant amended its identification of goods to that
indicated above in its response filed on September 21, 2004, and
that the Examining Attorney accepted this amendment in the office
action mailed May 19, 2005, stating that this amended
identification had been entered into the record. However, Office
records still list the originally filed identification, and the
Examining Attorney referred to this identification in his brief.
Because the amendment to the identification was clearly accepted
during the prosecution of the application, we have treated the
amended identification as the operative one; Office records will
be corrected to reflect this.
Ser No. 78259782
3
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered to be merely
descriptive; rather, it is enough that the term describe
one significant attribute, function or property of the
goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). On the other
hand, a mark is suggestive, and therefore registrable on
the Principal Register without resort to the provisions of
Section 2(f), if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
Ser No. 78259782
4
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
The Examining Attorney’s position as to why
applicant’s mark is merely descriptive has evolved during
the course of examination. Initially, the Examining
Attorney asserted that PRIVILEGE MANAGER denotes a computer
application which allows a user to compute, track and share
information while maintaining owner access and control of
the data, and that MRM is an acronym which denotes Member
Relationship Management or Marketing Relationship
Management. According to the Examining Attorney,
applicant’s goods are computer programs which allow users
to compute, track and share information for purposes of
member relationship management and/or marketing
relationship management, and therefore PRIVILEGE MANAGER
MRM is descriptive of applicant’s goods. First Office
action, mailed December 10, 2003. In support of this
position, the Examining Attorney made of record excerpts
from Internet sites which explained “privilege manager” as
follows:
Privilege Manager technology allows
state and local criminal justice
agencies to share information with
complete confidence and control.

Privilege Manager is a platform-
independent access control system that
Ser No. 78259782
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enables agencies to share information
while maintaining control of their
data. Applications incorporating
Privilege Manager allow agencies to
control their data based on role
definitions and individual user
attributes found in digital
certificates. By utilizing policy-
defined rule-sets, agencies transcend
the traditional username, login access
control paradigm.
www.templarcorp.com

Privilege Manager for UNIX
Description: Privilege manager for UNIX
controls access to account privileges
with the first out-of-the-box solution.
It allows delegation of any UNIX user’s
authority, so that you can implement
reasonable security controls, without
impacting the ability of users to
perform their daily work.
With Privilege Manager for UNIX,
responsibility for adding accounts,
fixing printer queues, and other
routine job functions can be safely
assigned to the appropriate users—
without disclosing the root password
and compromising your company’s
valuable information.
www.itsecurity.com

In response to this Office action, applicant submitted
“background” information about the nature of its goods:
...Applicant’s software product and
consulting services are marketed to
credit unions and other financial
institutions for them to monitor
overdrawn accounts to which the credit
union has granted overdraft benefits.
Instead of returning the check or other
NSF item, the credit union pays it and
charges the credit union’s customer a
fee. The software can determine
whether to pay the overdrawn item or to
Ser No. 78259782
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return it NSF according to the credit
union’s guidelines; it generates or
schedules telephone calls, emails,
letters or other communications to the
overdrawn account holder informing them
of the overdraft until the overdraft is
covered by a deposit; it keeps a
historical record of the account status
and communications; if necessary, it
closes the account and turns it over
for collections; and it provides
reports to the credit union personnel
about the status of the accounts and
the overdraft program as a whole.
Response filed September 21, 2004.2

After receiving this explanation the Examining
Attorney revised the reason that he considered the mark to
be merely descriptive. While not withdrawing the reasoning
he gave in the first Office action, in the final Office
action, mailed May 19, 2005, the Examining Attorney
asserted that “the wording PRIVILEGE MANAGER applies to and
is descriptive of the supervision of overdrawn accounts and
the wording MRM applies to and is descriptive of customer
relations,” and that the mark as a whole is merely
descriptive of the identified goods. The Examining

2 In its brief applicant modified this description somewhat,
indicating that the consumers are “banks and other financial
institutions” rather than just credit unions. Further, applicant
explained that it is the financial institutions themselves that
have overdraft benefit software, and applicant’s software does
not implement the program, but merely works with the bank’s
existing program to oversee communications with the bank’s
overdrawn account holders. The slight difference in the
explanation of the software has no effect on our determination of
the issue of mere descriptiveness.

Ser No. 78259782
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Attorney relied on dictionary and other evidence referring
to “overdraft privileges” as “a term of art in the industry
for discretionary benefit offered by financial institutions
to customers as protection against overdrafts.”
In his appeal brief, it appears that the Examining
Attorney has taken the position that PRIVILEGE MANAGER MRM
is merely descriptive for two reasons. As a unitary term,
“PRIVILEGE MANAGER denotes a computer application which
allows a user to compute, track and/or share information
while maintaining owner access and control of the data.”
Brief, p. 4. Thus, according to the Examining Attorney,
“applicant’s software functions in a manner consistent with
other Privilege Manager computer programs as referenced [by
the evidence of record] herein, namely, it monitors and
supervises overdraft account privileges while restricting
access thereto and securing the data therein.” Brief,
p. 5. The Examining Attorney also asserts that “the
individual terms PRIVILEGE and MANAGER are descriptive and
together create the descriptive term PRIVILEGE MANAGER,
notwithstanding and/or in addition to any term of art in
the computer software field.” Id. “Applicant’s goods
consist of manager software for managing bank overdraft
privileges. ... That the privileges managed are overdraft
privileges is implicit in the nature of the software.”
Ser No. 78259782
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Brief, p. 6. “In other words, applicant’s software works
with an existing financial institution’s existing software
to literally manage overdraft privileges.” Brief, p. 7.
As pointed out by both applicant and the Examining
Attorney in their briefs, applicant had another
application, Serial No. 78245750, for a similar mark,
PRIVILEGE MANAGER CRM, for identical goods that had been
refused registration on the ground of mere descriptiveness.
Applicant filed an appeal of that refusal and, subsequent
to briefing in the instant appeal, the Board rendered a
decision in the appeal of Application Serial No. 78245750
on July 24, 2006, reversing the refusal of registration.
Because a different Examining Attorney examined that
application, some of the evidence and the arguments were
different from those in this case. However, many of the
comments we made in rendering that decision are applicable
herein.
In the prior appeal, the Examining Attorney asserted
only the “unitary term” argument that has been put forth by
the Examining Attorney here, namely, that applicant’s
software functions in a manner consistent with other
Privilege Manager computer programs to monitor and
supervise overdraft account privileges while restricting
access thereto and securing the data therein. We found
Ser No. 78259782
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that this position was not persuasive, agreeing with
applicant that the relevant class of consumers would not
regard the word “privilege,” used in connection with the
identified software, as referring to database access. We
found, instead, that consumers would view “privilege” as
referring to the overdraft privilege programs with which
the software is used. We continue to hold that position
based on the evidence in the current record.
As noted above, the present Examining Attorney also
argues that, aside from the computer software meaning of
PRIVILEGE MANAGER, the individual words combine to form a
phrase that immediately informs consumers that applicant’s
software works with an existing financial institution’s
existing software to literally manage overdraft privileges.
While we agree that consumers will view the word
“privilege” in applicant’s mark as referring to the
overdraft privilege programs with which the software is
used, rather than to the computer software meaning of
accessing data, we do not agree that the mark as a whole,
PRIVILEGE MANAGER MRM, immediately and directly conveys the
requisite knowledge of a feature or characteristic of the
software. Applicant’s identification of goods shows that
its software is used to provide management reports in
connection with overdraft privilege programs. While the
Ser No. 78259782
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words PRIVILEGE MANAGER thus have some relationship to
applicant’s software, there is no evidence that PRIVILEGE
per se is readily recognized as meaning “overdraft
privilege,” or that when “privilege” is combined with
“manager” consumers will immediately understand the
resulting term, PRIVILEGE MANAGER, as describing software
for management reports on overdraft privilege programs.
Thus, the term does not directly impart information about
the goods with the requisite degree of specificity. The
words PRIVILEGE MANAGER are inadequate to convey direct
knowledge of the goods; more words are needed for a
consumer to ascertain what the software is designed to do.
See In re Southern National Bank of North Carolina, 219
USPQ 1231 (TTAB 1983) (MONEY 24 suggestive of automatic
teller machine services). Because imagination, thought, or
perception is required to reach a conclusion on the nature
of the goods, the mark PRIVILEGE MANAGER MRM is suggestive
and therefore registrable.
Finally, to the extent that there is any doubt on the
question of whether applicant’s mark is merely descriptive,
it is well established that such doubt must be resolved in
applicant’s favor. In re Gracious Lady Service, Inc., 175
USPQ 380 (TTAB 1972).
Ser No. 78259782
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Decision: The refusal of registration is reversed.
As indicated above, applicant’s disclaimer of MRM and its
amended identification of goods will be entered in the
record, and the application will then be forwarded to the
Examining Attorney to arrange for publication.