TRM Corp.

Trademark Trial and Appeal Board

Oct 10, 2002

No. 75932519 (T.T.A.B. Oct. 10, 2002)

Mailed: October 10, 2002
Paper No. 14/16
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re TRM Corporation
___________
Serial Nos. 75/932,518 and 75/932,519
___________
James H. Walters of Dellett and Walters for TRM Corporation.
Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
____________
Before Cissel, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
TRM Corporation has filed applications to register on
the Principal Register the marks IATMGLOBAL1 and IATM2 for
“automated teller machine services.”

1 Serial No. 75/932,518, in International Class 36, filed March 1, 2000,
based on an allegation of a bona fide intention to use the mark in
commerce.
2 Serial No. 75/932,519, in International Class 36, filed March 1, 2000,
based on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/932,518 & 75/932,519
2
In each application, the Trademark Examining Attorney
has issued a final refusal to register, under 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 in
connection with its services.
Applicant has appealed in each application. Both
applicant and the Examining Attorney have filed briefs in
each application, but no oral hearing was requested.
Because the issues are the same in both appeals, and the
records are essentially identical, we have considered the
appeals in these two applications together and we issue a
single opinion.
The Examining Attorney contends that “I” is commonly
understood to mean “Internet”; that “ATM” is a commonly used
and recognized acronym for the generic term “automated
teller machine”; that, with respect to IATMGLOBAL, the term
“global” means “worldwide”; and that the individual terms
retain their ordinary meanings when combined in applicant’s
marks. The Examining Attorney contends that applicant’s
services are “Internet-enabled automatic teller machines
that are available worldwide,” and, thus, she concludes that
both marks merely describe these services.
In support of her position, the Examining Attorney
submitted the following definitions of the terms involved:
Serial No. 75/932,518 & 75/932,519
3
“global” – Of, relating to, or involving the
entire earth; worldwide. The American Heritage
Dictionary of the English Language, 3rd ed. 1992.
“ATM” – abbreviation. Automated teller machine.
Automatic teller machine. The American Heritage
Dictionary of the English Language, 3rd ed. 1992.
“ATM” – Automated teller machine.
www.acronymfinder.com, August 2, 2000.
“I” – Internet. www.acronymfinder.com, August 2,
2000.
“Internet” – 1. A large network made up of a
number of smaller networks. 2. “The” Internet is
made up of more than 100,000 interconnected
networks in over 100 countries, comprised of
commercial, academic and government networks. The
Computer Glossary, 8th ed. 1998.
“Internet” – noun. A matrix of networks that
connects computers around the world. The American
Heritage Dictionary of the English Language, 3rd
ed. 1992.
The Examining Attorney submitted a significant number
of excerpts from various Internet websites and excerpts
retrieved from the LEXIS/NEXIS database. A large number of
these excerpts that use “iATM” or iATMglobal” refer to
applicant, of which the following is an example:
iATMglobal.net, the e-commerce infrastructure
subsidiary of TRM Corporation …, announces that it
has agreed to acquire Strategic Software Solutions
Limited, a leading developer of custom Internet
solutions for Automated Teller Machines (ATMs).
Strategic Software Solutions and iATMglobal.net
will build a Web-based distribution channel to
deliver convenient access [to] e-commerce goods
and services through the existing worldwide
network of approximately one million ATMs.
… Strategic Software Solutions and NCR jointly
market @tmLink, the only Internet-based ATM
uploading and notification product for NCR-built
ATMs. [www.kiosks.org, August 2, 2000.]
Serial No. 75/932,518 & 75/932,519
4
The following are examples of excerpts submitted by the
Examining Attorney that discuss Internet banking and ATM
services:
KeyCorp’s online banking Web site, Key.com, has
been ranked among the top five financial services
sites on the Internet …
The online service combines ATM functions with
telebanking and other traditional services.
[Dayton Daily News, July 6, 2000.]
Wells is in the process of hooking to the Internet
at least 800 of its ATMs in California and Arizona
and plans to do the same throughout its territory.
Consultants may debate the merits of Web-enabling
ATMs, but several large banks, such as Bank of
America, have announced plans to do it. [The
Charlotte Observer, June 19, 2000.]
The Examining Attorney also submitted numerous excerpts
showing use of the term ATM to mean “automated teller
machine.” The following are examples of excerpts that use
“I” to refer to “Internet,” sometimes as a trademark:
iPrint.com – “i” for Internet – went live in
January 1997… [Business Marketing, August 1,
1999.]
But mostly Oracle8i is a statement of the way
Oracle visualizes the future. The ‘i’ stands for
Internet, and is a reminder of Oracle’s belief
that ‘the Internet changes everything.’
The iMac also was built with networking in mind –
in fact, the “i” stands for Internet. [Industry
Week, December 21, 1998.]
Companies that have been successful in making a
splash with the 20-something consumer market have
used an IMC plan – in which the “I” stands for
“Internet.” [Marketing News, June 8, 1998.]
Internet service providers this year to offer
large storage solutions called I:Drives. The I is
for Internet. Subscribers would pay $20 to $30
Serial No. 75/932,518 & 75/932,519
5
per month to rent Internet space in 50MB to 100MB
increments. [Broadcast Engineering, June 1998.]
Besides, I want to help shore up the embattled
forces behind the “I” prefix, short for
“Internet,” of course. (InfoWorld, bucking the
trend, has long preferred “I-commerce” to “e-
commerce.”) [InfoWorld, August 16, 1999.]
Domain names with an “I-״ prefix – where the “I”
stands for Internet, as in “I-notebooks” are hot
now, along with the more familiar “e-“ prefixes,
Cuence said. [Computer Reseller News, June 14,
1999.]
Applicant contends that the Examining Attorney has not
made a prima facie case that applicant’s marks are merely
descriptive; and that the evidence submitted by the
Examining Attorney actually supports applicant’s position.
Applicant alleges that third-party registrations demonstrate
that “I” plus another term is registrable; that there is no
evidence of third-party use of either of applicant’s marks
in a descriptive manner; that many of the articles submitted
by the Examining Attorney refer to applicant, and the terms
are used as applicant’s marks; that, considered in their
entireties, neither mark is merely descriptive, regardless
of whether the individual terms comprising each mark may be
descriptive; that the Examining Attorney has improperly
considered the nature of applicant’s services based on
information other than the identification of services; and
that applicant’s mark has been registered in the United
Kingdom and, therefore, it should be registrable by the
USPTO.
Serial No. 75/932,518 & 75/932,519
6
Applicant submitted excerpts from its Internet website
[www.iatmglobal.net, February 2000], including the following
statements:
iATMglobal is an e-commerce infrastructure company
building a software-driven distribution channel to
furnish conveniently accessible e-commerce goods
and services over the worldwide one million unit
ATM network. We specialize in providing end-to-
end e-commerce solutions for retailers, financial
institutions, and non-bank deployers of ATMs by
forming strategic relationships with select e-
commerce companies interested in offering their
goods and services to consumers via the ATM
network.
When iATMglobal identified the need for ATMs to
offer more revenue opportunities to the worldwide
population of cardholders we realized that any
solution had to be simple, scalable and
profitable.
RAAP [Remote Access Application Protocol] allows
existing Internet companies to offer their
products and services on the ATM, in a manner
consistent with ATM user expectations. And in so
doing converts the ATM into a unique shop-front
for the huge population of ATM users.
At the sharp end of our RAAP architecture is our
ATM e-commerce Agent – our RAAP Agent. An
extraordinary piece of well-worked software
allowing seamless integration between the existing
Cash Dispensing software on the ATM and our
Internet Partner Companies.
Applicant also submitted a printout containing some
information relative to its United Kingdom registration of
IATMGLOBAL, although the goods or services are not listed;
and copies of third-party registrations of marks with an “I”
or “i” prefix followed by another word.
Serial No. 75/932,518 & 75/932,519
7
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or is intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used or intended to be used, and the impact that it is
likely to make on the average purchaser of such goods or
services. In re Recovery, 196 USPQ 830 (TTAB 1977).
There is no question from this record that “ATM” is a
commonly understood acronym for “automated teller machine,”
and that “global” is synonymous with “worldwide.” Applicant
does not appear to dispute either of these facts.
Similarly, we find the evidence sufficient to establish that
ATM services are available via the Internet; and that the
Serial No. 75/932,518 & 75/932,519
8
letter “I,” in the context of ATM services, will be readily
understood to be an acronym for “Internet.”
Applicant’s argument that the Examining Attorney
improperly referred to materials outside of the recitation
of services is not well taken. The Examining Attorney may
refer to any appropriate resources to determine the nature
of applicant’s services. However, in determining whether a
mark is merely descriptive, the Examining Attorney may not
consider services that are not within the scope of the
identified services in the application. Applicant’s
services are broadly identified in each application as
“automated teller machine services,” which terminology
encompasses any medium for offering those services,
including the Internet. Further, applicant’s web site
information indicates that its ATM services are intended to
be offered via the Internet and/or that customers may have
access to Internet-based retailers and other Internet-based
services via ATMs that utilize applicant’s services.
The combination of the individual terms into IATM and
IATMGLOBAL does not change the meaning of the individual
terms, does not create an incongruous meaning, nor has
applicant suggested any other possible meaning for these
terms when combined to form the marks herein. Therefore,
IATM merely describes applicant’s proposed Internet-related
automated teller machine services; and IATMGLOBAL further
Serial No. 75/932,518 & 75/932,519
9
describes that these proposed services will have a worldwide
scope.
We are not persuaded otherwise by applicant’s arguments
to the contrary. First, we note that applicant has not
submitted a complete copy of its United Kingdom registration
and, even if it had, U.S. trademark law is different from
United Kingdom trademark law and the Board must determine
the registrability of the marks herein by applying U.S. law.
Second, the fact that third parties may have registered
marks beginning with an “I” or “i” which may mean “Internet”
is not dispositive of the appeals before us as each case
must be decided on the basis of its particular facts.
“Third-party registrations simply are not conclusive on the
question of descriptiveness, and a mark which is merely
descriptive cannot be made registrable merely because other
similar marks appear on the register.” See, In re
Scholastic Testing Service, Inc., 196 USPQ 517, 519 (TTAB
1977).
Further, neither the fact that some of the evidence
submitted refers to applicant, nor that applicant will or
intends to be the first entity to use the terms herein in
connection with such services, is dispositive where, as
here, such terms unequivocally project merely descriptive
connotations. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953
Serial No. 75/932,518 & 75/932,519
10
(TTAB 1994), and cases cited therein; and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
In conclusion, when used in connection with applicant’s
services, the terms IATM and IATMGLOBAL would immediately
describe, without conjecture or speculation, a significant
feature or function of applicant’s services as discussed
above. Nothing would require the exercise of imagination,
cogitation, mental processing or gathering of further
information in order for purchasers of and prospective
customers for applicant’s services to readily perceive the
merely descriptive significance of the terms IATM and
IATMGLOBAL as they pertain to automated teller machine
services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed in each application.