SecureCar, Inc.

Trademark Trial and Appeal Board

Mar 24, 2004

No. 76464131 (T.T.A.B. Mar. 24, 2004)

Mailed: 24 MAR 2004
Paper No. 11
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SecureCar, Inc.1
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Serial No. 76464131
_______
Todd C. Steckler of Morgenthau & Greenes, LLP for
SecureCar, Inc.
Steven R. Fine, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Hairston, Chapman and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 5, 2002, SecureCar, Inc. (applicant),
through its predecessor, applied to register the mark
SECURECAR, in typed form, on the Principal Register for
1 The application was originally filed in the name of Empire
International, Ltd. The application was subsequently assigned to
SecureCar, Inc. See Reel/Frame No. 2635/0209.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76464131
2
services identified as the “transportation of passengers by
armored, bulletproof and other security-enhanced vehicles”
in International Class 39. The application (Serial No.
76464131) was based on an allegation that the mark was
first used anywhere and in interstate commerce on October
8, 2001.
The examining attorney refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because “the attribute described by the term SECURECAR is
the armored, bulletproof and otherwise security-enhanced
vehicles in which applicant transports passengers.” Office
Action dated June 6, 2003 at 1. Applicant, on the other
hand, argues that an “armored car is just that, a car
fortified with armor plating. A secure car, on the other
hand, requires a broad panoply [of] services that are not
immediately apparent from the definitions of secure.”
Appeal Brief at 11.
When the examining attorney made the refusal final,
applicant appealed to this board.2
We affirm.
2 On January 22, 2004, applicant withdrew its request for an oral
hearing.
Ser. No. 76464131
3
For a mark to be merely descriptive, it must
immediately convey knowledge of the ingredients, qualities,
or characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505,
507 (CCPA 1980); In re MBNA America Bank N.A., 340 F.3d
1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service”). Descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
We must consider whether the mark in its entirety is
merely descriptive. P.D. Beckwith, Inc. v. Commissioner,
252 U.S. 538, 545-46 (1920). However, “[i]t is perfectly
acceptable to separate a compound mark and discuss the
implications of each part thereof … provided that the
ultimate determination is made on the basis of the mark in
its entirety.” In re Hester Industries, Inc., 230 USPQ
797, 798 n.5 (TTAB 1986).
The following evidence of record supports our
conclusion that the term SECURECAR is merely descriptive
Ser. No. 76464131
4
for the transportation of passengers by armored,
bulletproof and other security-enhanced vehicles.
An article from the San Antonio Express-News, dated
November 10, 1996, contained the headline “Kidnappings for
ransom spark interest in armored cars.” The text of the
article goes on to report that “‘[m]any armored cars are
obvious and that makes you of interest to the casual
observer,’ Cash said by telephone. ‘And once you start
down the road with a secure car, you then need a secure
chase car, which is of little use without an advance car as
well.’” An Internet article fro Inside Technology is
entitled “Booming need for secure cars.” The article
reports that “General Motors and Ford enter armored vehicle
market in response to growing demand since 9/11.” The
opening sentence of the report states “Cars that can be
hermetically sealed or [that] withstand shots from a .44
caliber Magnum are no longer the stuff of James Bond movies
– they are a commodity in greater demand following the
Sept. 11 terror attacks. So Detroit automakers are
creating cars specifically for the limited but expanding
armored vehicle market.”
Advertising that applicant submitted describes its
services as follows: “When security concerns dictate a
higher standard for chauffeured transportation, call
Ser. No. 76464131
5
SecureCar, Empire International’s Secure Transportation
Division, -- the industry’s only worldwide Security
Chauffeur and Secure Vehicle service.” Among the features
and services that SecureCar offers are:
Secure Luxury Sedans & SUVs including:
- Safety vehicles (US only) – with run flat tires and
security glass
- Light, Medium, and Heavy Armored Luxury Sedans – (US
and Worldwide) with run-flat tires, composite
security glass, integrated armor plating, and self-
sealing fuel tanks
The examining attorney also submitted a definition
from The American Heritage Dictionary of the English
Language (3rd ed. 1992) of “secure” as “free from danger or
attack: a secure fortress.” Applicant maintains that “the
‘secure’ characteristic is an absolute, as prescribed by
the words ‘free from’ rather than ‘freer from’ in the
definition relied upon [by] the Examining Attorney.”
Applicant’s Brief at 9 (emphasis in original). Applicant
concludes that an “armored car may be safer than a normal
car, but certainly is not free from danger or attack.” Id.
Applicant’s mechanical reading of the definition of the
term “secure” is not supported by the example in the
definition as “a secure fortress” inasmuch as history
undoubtedly records the fall of many “secure fortresses.”3
3 Another definition of “secure” is “free from or not exposed to
danger or harm; safe.” The Random House Dictionary of the
Ser. No. 76464131
6
Even applicant itself uses the term “secure” in a way
that seems remarkably similar to the way the examining
attorney maintains the word would be interpreted by
prospective purchasers. Applicant’s “Secure Transportation
Division” features “Secure Luxury Sedans & SUVs.” It is
unlikely that applicant is guaranteeing that these secure
luxury sedans and SUVs are absolutely free from danger.
Applicant’s services involve transporting passengers
in armored, bulletproof and security-enhanced vehicles.
Applicant itself refers to its Secure Transportation Team
as providing “Secure Luxury Sedans & SUVs.” These vehicles
can accurately be described as secure cars.4 As noted
earlier, we must view the term in relation to these
services and not in the abstract. When we consider the
term in association with the transportation of passengers
English Language (unabridged) (2d ed. 1987). We take judicial
notice of this definition and the additional definition of the
term “fortify” that the examining attorney made of record in his
brief. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983). While there can be a
philosophical discussion as to whether mortals can ever be “safe”
or “not exposed to danger or harm,” clearly in the vernacular, we
use the term in a less absolute sense than applicant associates
with the term.
4 There is apparently no dispute that the word “car” is
descriptive for applicant’s services. We take judicial notice of
the following definition of “car” as “an automobile.” The Random
House Dictionary of the English Language (Unabridged) (2d ed.
1987). Applicant’s services clearly involve the use of
cars/automobiles. See Applicant’s Reply Brief at 2 (“Therefore,
the fact that SecureCar’s automobiles may be armored…”).
Ser. No. 76464131
7
in armored and security-enhanced vehicles, the term
SECURECAR would be immediately describe a feature of those
services, i.e., the cars are armored and/or security
enhanced. The evidence of record supports this meaning of
the term secure car with armored vehicles.
While applicant argues there is a distinction between
the use of “armored car” and “secure car” in the articles,
any difference would not mean that the term is suggestive
rather than descriptive of applicant’s services. Assuming
that there is a difference between the meanings of the
terms, applicant’s services are not limited to transporting
passengers in armored cars. Its services also involve the
use of “other security-enhanced vehicles,” which would be
covered by the definition of “secure” and would be
effectively described as “secure cars.” The evidence does
show that when potential purchasers encounter the mark in
relationship with applicant’s services that are advertised
as transporting passengers in secure luxury sedans and
SUVs, they will immediately know that these cars are
security-enhanced or secure cars.
While applicant points out that its services involve
several features, for a mark to be merely descriptive, a
term need only describe a single significant quality or
property of the goods. In re Gyulay, 820 F.2d 1216, 3
Ser. No. 76464131
8
USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 120 USPQ 293,
294 (CCPA 1959). Also, while not raised as an issue, the
combining of two descriptive words into one word without a
space normally does not result in a non-descriptive term.
See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1017
(Fed. Cir. 1987) (SCREENWIPE generic for a wipe for
cleaning television and computer screens); Abcor Dev.
(GASBADGE at least descriptive for gas monitoring badges;
three judges concurred in finding that term was the name of
the goods); Cummins Engine Co. v. Continental Motors Corp.,
359 F.2d 892, 149 USPQ 559 (CCPA 1966) (TURBODIESEL generic
for a type of engine); In re Orleans Wines, Ltd., 196 USPQ
516 (TTAB 1977) (BREADSPRED descriptive for jams and
jellies that would be a spread for bread); In re Perkin-
Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE merely
descriptive for interferometers utilizing lasers). In this
case, whether spelled SECURE CAR or SECURECAR, the term
would convey the same meaning to prospective purchasers of
transportation services involving the use of armored,
bulletproof and security-enhanced vehicles.
Applicant has included with its brief a list of
registrations that included the registration number, the
typed term in the mark, and the identification of goods or
Ser. No. 76464131
9
services. Normally, we would not consider lists of
registrations. In re Duofold, Inc., 184 USPQ 638, 640
(TTAB 1974) (“[T]he submission of a list of registrations
is insufficient to make them of record”). However, the
examining attorney has not objected to the list and he has
discussed these registrations so we will consider the
information stipulated into the record. The examining
attorney has pointed out that several of these
registrations are on the Supplemental Register. Others are
expired.5 Ultimately, we do not find these registrations
persuasive. Lists of marks with goods and services only do
not provide much information to form a conclusion as to how
the Office treated a particular term. The Federal Circuit
has explained that “[e]ven if some prior registrations had
some characteristics similar to Nett Designs' application,
the PTO's allowance of such prior registrations does not
bind the Board or this court.” In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Here, the registrations to which applicant refers are for a
variety of goods and services. They apparently include
5 The examining attorney responded to applicant’s list by
referring to several other marks in his brief that are registered
on the Supplemental Register or with disclaimers. Applicant in
its Reply Brief at 5 n.1 discusses some of these registrations.
Again, because applicant does not object we will consider the
information that the examining attorney submitted in his brief as
stipulated into the record.
Ser. No. 76464131
10
registrations on the Principal Register, but also on the
Supplemental Register. Obviously, each application must be
determined on its own record. In the present case, the
record supports the conclusion that applicant’s mark
SECURECAR is merely descriptive for the identified
services.
Decision: The refusal to register is affirmed.