Valmarc Corporation

Trademark Trial and Appeal BoardMar 5, 2012

No. 76700150 (T.T.A.B. Mar. 5, 2012)

Mailed: March 5, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Valmarc Corporation ________ Serial No. 76700150 _______ Morris I. Pollack, Esq. for Valmarc Corporation. Michael Webster, Trademark Examining Attorney, Law Office 102 (Karen M. Strzyz, Managing Attorney). _______ Before Bucher, Zervas and Wellington, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Valmarc Corporation has appealed from the final refusal of the examining attorney to register on the Principal Register as a mark for the following International Class 45 services: Providing brand and source authentication services of products to confirm to parties the brand source for each product when offering such products for sale or disposition to protect against counterfeiting, tampering and diversion during manufacture and movement through channels of trade in commerce, e-commerce and other transactions, all via the allocation of a unique THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 76700150 2 identifier for each article in addition to providing consulting services related thereto.”1 The examining attorney finally refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that, when used in connection with applicant’s services, would be merely descriptive of such services. After the examining attorney issued a final action, applicant filed an appeal and a request for reconsideration. The examining attorney denied the request for reconsideration, and subsequently both applicant and the examining attorney filed briefs. We affirm the refusal to register. In addition to dictionary definitions of “authentication” and “source,” the examining attorney introduced into the record in support of his refusal to register Internet pages which use these terms in the context of anti-counterfeiting and product authentication services. See evidence from the September 22, 2010 final Office action, including: http://www.product- authentication.com/index.php/programme.html “Product Authentication + Security Program,” stating: “Frequently companies manage product 1 Application Serial No. 76700150 was filed on October 30, 2009, based on applicant’s assertion of its bona fide intention to use the mark in commerce. Serial No. 76700150 3 security with reactionary tactics and seldom integrate it into company strategy marketing plans, or distribution plans. … Common reactions [i]nclude the immediate use of authentication and track and trace systems which, as many have experience[d], can be expensive and time consuming tools aimed at resolving what may be an unknown source. http://www.pmpnews.com/article/pending-anti- counterfeiting-legislation-makes-investment- serialization-technology-imperative “Pending Anti-Counterfeiting Legislation Makes Investment in Serialization Technology Imperative,” stating: “Authentication is the ability to verify that a drug product genuinely came from the manufacturer or other legalized source.” http://www.faqs.org/patents/app/20090040023 Patent application for an “RF Transponder for Off-Line Authentication of a Source of a Product Carrying the Transponder.” http://tracelink.com/product-tracking-for- product-security-patient-safety “Product Tracking and Authentication,” stating that a benefit of the provider’s capabilities is to increase product security by providing product authentication services by “captur[ing] the source of failed authentication attempts of unauthorized product in the channel.” http://osdir.com/patents/Record-receiver/Product- authentication-06939826.html A patent abstract for an invention entitled “Product authentication” which claims, “an authentication system adapted to affirm authenticity of source of said data storage device” (Claim 1); and referring multiple times to “product source authentication,” e.g., “Also for product source authentication, it is known to provide various identification indicia on the packaging which contains the good.” (“Background” of invention, ¶9) Serial No. 76700150 4 A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (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 merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). We find that is merely descriptive of a feature of applicant’s services. Applicant’s recitation of services recites that applicant provides “brand and source authentication services of products to confirm to parties the brand source for each product….” Applicant is authenticating a product’s source as part of its services, that is, it provides authentication as to the source of a product. The Internet evidence in the record confirms that the terms “authentication” and “source” are used in the context of Serial No. 76700150 5 determining a brand’s source in the context of counterfeiting, tampering or diversion of goods. “Authentication to source” succinctly, and without imagination or pause, identifies a feature of applicant’s services. Applicant’s entire argument against the refusal is, “The Identification of Services, as stated is directed to brand and source of products. It is not just to any source, such as the USPTO source of trademark listings or the listings of the source of manufacturers, or libraries, or the like. As such, it is not merely descriptive ….” Brief at 2. Applicant’s argument is not well taken; “source” as it appears in the proposed mark encompasses both brand source and the producer (or “source”) of the goods. Also, it is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004). Decision: The refusal to register is affirmed.