TRM Corp.

Trademark Trial and Appeal Board

Aug 29, 2002

No. 75934901 (T.T.A.B. Aug. 29, 2002)

Mailed: 8/29/02
Paper No. 14
GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TRM Corporation
________

Serial No. 75/934,901
_______

James H. Walters of Dellett and Walters for TRM
Corporation.

Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Simms, Bucher and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

TRM Corporation seeks to register IATMNETWORK as a
mark for “automated teller machine services,” in
International Class 36.1 Registration has been refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). The examining attorney's position is that,

1 Serial No. 75/934,901, filed March 3, 2000, based upon an
allegation of applicant’s bona fide intention to use the term in
commerce.

This Disposition Is Not
Citable as Precedent
of the TTAB
Ser No. 75/934,901
2
when used in connection with applicant's services,
IATMNETWORK will be merely descriptive of them.
When the examining attorney made the refusal final,
applicant appealed and filed a request for reconsideration,
which the examining attorney denied. The appeal then
resumed and has been fully briefed. Oral argument was not
requested.

The Record

The Office bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
(When the examining attorney sets forth a prima facie case,
the applicant cannot simply criticize the absence of
additional evidence supporting the refusal, but must come
forward with evidence supporting its argument for
registration.). To meet the Office's burden, the examining
attorney has made of record evidence from an on-line
acronym finder which shows that “I” can mean, among other
things, “Internet” and that “ATM” can mean, among other
things, “Automated Teller Machine”; an excerpt from an on-
line publication titled the Tech Encyclopedia
(www.techweb.com/encyclopedia) showing that “I-commerce” is
defined as “Internet commerce”; definitions of “Internet”
Ser No. 75/934,901
3
from both an on-line dictionary and a printed computer
dictionary; definitions of “ATM” and of “Network” from an
on-line dictionary; a press release from applicant,
appearing on the KIOSKS.ORG Web site and on certain wire
services, the former evidenced by a copy of the Web pages
and the latter evidenced by copies of wire service articles
or excerpts retrieved from NEXIS; excerpts of articles
retrieved from NEXIS by virtue of searches for references
to I ATM or IATM, or references to Internet and ATM, or
references to ATM and bank, banks, banking, etc.; excerpts
of articles retrieved from NEXIS which explain that “I” or
“i” as used in certain composite terms or domain names is
intended to mean “Internet.”
Applicant, in response to an examining attorney
requirement made pursuant to Trademark Rule 2.61, 37 C.F.R.
§2.61, submitted reprints of Web pages from its iATMglobal
subsidiary. Also, with its request for reconsideration
applicant included copies of records retrieved from the
Office’s Trademark Electronic Search System (TESS), showing
registration of certain marks composed of “I” and another
term; a copy of a Web page from the International
Association of Transport and Communications Museums,
www.iatm.org; and a copy of records retrieved from the
United Kingdom trademark registry showing that applicant
Ser No. 75/934,901
4
has obtained registration of IATMNETWORK in the United
Kingdom.

Arguments

The examining attorney has argued that the letter “I”
is equivalent to “Internet,” and would be perceived, when
used as part of IATMNETWORK in connection with applicant's
services, as indicating that applicant’s services are
“Internet-enabled”; that “ATM” means “automated teller
machines” and “[w]hatever else applicant’s services may be,
they are certainly centered around ‘ATMs’”; and that
“network,” as used in IATMNETWORK, will be readily
perceived as having the connotation of an interconnected
set of computers and, therefore, as referring to “a network
of Internet-enabled ATM’s [sic], not just one.”
In essence, the examining attorney is arguing that
consumers of applicant's goods or services would readily
perceive IATMNETWORK as a shorthand version of the phrase
Internet ATM network, and that applicant has created or
administers an Internet-enabled ATM network, so that the
designation IATMNETWORK is not suggestive but, rather,
immediately conveys the nature of applicant’s services.
Applicant argues that IATMNETWORK is at most
suggestive and does not inherently denote automated teller
Ser No. 75/934,901
5
machines. In this regard, applicant notes that IATM can
mean various things and refers to the NEXIS reference and
Web page that show IATM is an acronym for the International
Association of Transport and Communications Museums and to
the NEXIS reference that shows IATM is a stock exchange
symbol for Interactive Terminals Inc. Applicant asserts
that it is only because of its use of IATMNETWORK that the
designation has any association with ATM services.
Applicant also argues that the examining attorney is
wrong in arguing that designations coupling “I” or “i” with
another term are readily perceived as describing Internet
based services. To support this contention, applicant
notes that the Office has registered other “I”-formative
terms. Further, applicant attempts to distinguish this
Board’s decision of In re Zanova, Inc., 59 USPQ2d 1300
(TTAB 2001), which held that “Internet tools” is a term
commonly used for various software programs and that
prospective consumers or users of the services involved in
that case would readily perceive the “I” in “ITOOL” as
referring to the Internet. Specifically, applicant argues
that the Zanova case is distinguishable because its
services are not computer services, but ATM services, so
that there would be no immediate association with the
Internet.
Ser No. 75/934,901
6
Additional arguments by applicant rely on registration
of IATMNETWORK in the United Kingdom; the assertion that
the record does not show any competitors using IATMNETWORK
and, in fact, almost all of the NEXIS references showing
use of IATM are references to applicant; and that the
examining attorney has unfairly denied applicant
registration by dissecting IATMNETWORK into the components
I, ATM, and NETWORK and by not considering the
registrability of the composite.

Decision

The question 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
those goods or services and the possible significance that
the term would have to the average purchaser or user of the
goods or services. See In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979) and In re Recovery, 196 USPQ 830 (TTAB
1977).
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, if it immediately describes an
ingredient, quality, characteristic or feature thereof, or
Ser No. 75/934,901
7
if it directly conveys information regarding the nature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also In re Gyulay, supra. It is not
necessary that a term describe all of the properties or
functions of the goods or services in order for it to be
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute or idea about them.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Thus, it is not necessary, in this instance, that a
prospective user of ATMs that may be provided or
administered by applicant be immediately apprised of the
full panoply of features available through the machines for
the term IATMNETWORK to be found merely descriptive.
Moreover, in this case we consider the significance of
IATMNETWORK not just to users of ATMs but to businesses
whose ATMs may be enhanced or administered through services
provided by applicant. This is because we consider the
recitation of “automated teller machine services” to be
broad enough to encompass not only services that, for
example, a bank account holder may obtain from an ATM, such
as withdrawal of money or transferring funds between
accounts, but also services related to the administration
or enhancement of ATMs, such as would be provided by an
Ser No. 75/934,901
8
entity that manages or maintains a network of ATMs for a
bank or financial services company.
From the record it is clear that ATM, while it may be
an acronym for many things, is commonly used shorthand for
“automated teller machine,” and it is equally clear that
ATMs are widely available. Their proliferation stems from
their convenience for users and the operational
efficiencies they provide to banks and other financial
services companies. It is also clear that there are
different networks of ATMs and that users of banking
services obtained through ATMs are no doubt aware of this,
if not for any other reason then at least because of the
financial repercussions attributable to obtaining services
inside or outside a particular network. Applicant itself
discusses ATM networks on its Web pages:
…[Applicant’s RAAP software] checks that all
connecting ATMs are genuine and registered ATMs –
with all the necessary security checks you would
expect of an ATM network. …
…Similarly [sic] as each new internet partner
joins they too have access to an ever increasing
ATM network.

Thus, if the designation applicant sought to register
was ATMNETWORK, we would have no doubt that this would have
immediate descriptive significance for both end users of
ATMs and for banks and financial services companies that
Ser No. 75/934,901
9
administer or participate in an ATM network. The
combination ATM and NETWORK into one term would not lead
either class of consumers to fail to recognize and grasp
the significance of both ATM and NETWORK and would not
result in any incongruity, ambiguity or any other
distinctive effect. They might not immediately know the
full range of ATM related services applicant provides, but
that is not a prerequisite to finding a term descriptive
under the Lanham Act. Of course, ATMNETWORK is not the
designation applicant seeks to register. Applicant has not
combined just ATM and NETWORK, but has combined I and ATM
and NETWORK.
We have no doubt that the combination IATMNETWORK
would also have immediate descriptive significance for
businesses that would obtain automated teller machine
related services from applicant to enhance ATMs in their
respective networks. Despite applicant’s arguments to the
contrary, such consumers would immediately discern that I
is a reference to the Internet. The record is clear that
there are expanding efforts to enhance the functionality of
ATMs by connecting them to the Internet. See, for example:
Using technology for delivery means souping up
even Old Economy equipment such as automated
teller machines. Wells [Fargo] is in the process
of hooking to the Internet at least 800 of its
ATMs in California and Arizona and plans to do
Ser No. 75/934,901
10
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 record is also clear that applicant offers Web-
enabling services to owners of ATM networks. As noted
earlier, we consider such services to be encompassed by the
recitation “automated teller machine services.” There is
nothing incongruous, ambiguous or otherwise distinctive
resulting from the combination of I, ATM and NETWORK that
would require business consumers to pause or cogitate on
the meaning of the combination, when considered in
connection with applicant’s services.
End users of ATMs also would find IATMNETWORK to have
immediate descriptive significance, i.e., to indicate that
applicant’s services involve providing end users with Web-
enabled ATMs. In this regard, we note that ATMs are
commonly available and are not doubt used by some
individuals who are less Internet-savvy than others.
Nonetheless we find that the average end user of an ATM
would likely have sufficient familiarity with the Internet
to conclude, when considering IATMNETWORK in conjunction
with automated teller machines that such user would
immediately know that an IATMNETWORK ATM would be one that
is connected to the Internet. IATMNETWORK is not rendered
Ser No. 75/934,901
11
non-descriptive and therefore registrable merely because
there may be some users of ATMs who do not use the Internet
and might not, therefore, draw the same conclusions that an
average user would. Likewise, the term is not rendered
non-descriptive and registrable merely because the average
end user of an ATM might not be immediately aware of how an
ATM is connected to the Internet or of what information and
services obtainable through the Internet would also be
obtainable through an IATMNETWORK ATM. It is sufficient
that they would immediately conclude that the ATM’s
Internet connection is a significant feature of the machine
and therefore of the services obtainable from it.
We are not persuaded of the registrability of
IATMNETWORK by applicant’s argument that it has been able
to register the term abroad; we are bound to determine
registrability under the applicable law of the United
States. Nor are we persuaded that the term is registrable
merely because some “I”-formative marks have been
registered in the United States. It is clear that each
case must be decided on its own record and that, while
Office consistency is desirable, the correct result in an
individual case is paramount. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Finally, we
are not persuaded that IATMNETWORK is registrable merely
Ser No. 75/934,901
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because applicant may be the only user of the complete
combination IATMNETWORK and one of a few users of IATM.
Zanova, supra at 1305.
In closing, we note that applicant has argued that it
has unfairly been denied registration because the examining
attorney has dissected the elements of IATMNETWORK, found
each descriptive, and then refused registration of the
composite. Applicant has not, however, articulated any
theory why the combination of these elements results in a
registrable mark. As noted, we see no resulting
incongruity, ambiguity or other form of distinctiveness
that results from the combination. There is nothing
impermissible in considering the connotative significance
of elements of a term, so long as the ultimate
determination of registrability is based on consideration
of the mark as a whole. Id. at 1304-05. Having so
considered IATMNETWORK, we find the term merely
descriptive.
Decision: The refusal of registration under Section
2(e)(1) of the Lanham Act is affirmed.