Venyon Oy

Trademark Trial and Appeal Board

Sep 21, 2012

No. 79041165 (T.T.A.B. Sep. 21, 2012)

Mailed:
September 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Venyon Oy
________

Serial No. 79041165
_______

Thomas J. Moore of Bacon & Thomas, PLLC for Venyon Oy.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).1
_______

Before Seeherman, Bucher and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Venyon Oy, a corporation of Finland, has appealed the
final refusal of the trademark examining attorney to
register VENYON as a trademark, Application Serial No.
79041165. The basis for the refusal is that certain of the
goods and services in applicant’s application are not
identified acceptably, but are indefinite. Because the

1 Mr. Charlon was given responsibility for examining this
application in 2009; prior to that another examining attorney
reviewed the application and issued several Office actions.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79041165
2
identification as a whole is quite long, and is in five
classes, we do not set forth the entire identification
here, but list at the end of this opinion all of the
acceptable identifications.2
Applicant’s application, which was filed on March 14,
2007, is based on a request for extension of protection of
International Registration No. 931025, pursuant to Section
66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). That
section, as well as Sections 60 through 74, 15 U.S.C.
§§ 1141-1141n, were added as a result of the United States
becoming a signatory to the Protocol Relating to the Madrid
Agreement Concerning the International Registration of
Marks, adopted at Madrid, Spain, on June 27, 1989, and
generally referred to as the Madrid Protocol. As a result
of the amendment to the Trademark Act, “the holder of an
international registration is entitled to the benefits of
extension of protection of that international registration
to the United States to the extent necessary to give effect
to any provision of the Madrid Protocol.” Section 65(a),
15 U.S.C. § 1141(e). Section 66(a) provides that:
A request for extension of protection of an
international registration to the United States
that the International Bureau transmits to the

2 The examining attorney has explained that, whatever happens
with the instant appeal, the application will proceed to
publication for the goods and services to which he has not raised
an objection. See Trademark Rule 2.65(a); TMEP § 718.02(a).
Ser. No. 79041165
3
United States Patent and Trademark Office shall
be properly filed in the United States if such
request, when received by the International
Bureau, has attached to it a declaration of bona
fide intention to use the mark in commerce that
is verified by the applicant for, or holder of,
the international registration.

Applicant asserts, without citing any authority, that
“the U.S. adopted the treaty to allow U.S. trademark owners
to better protect their trademarks in foreign counties
[sic] at lower cost,” and that “[t]he treaty is of course
based on reciprocity.” Brief, p. 9.3 Applicant contends
that in the present application reciprocity has been
denied. Applicant cites to various rules that relate to
applications based on Section 66(a), although none of these
rules requires the USPTO to accept identifications of goods
and services that are indefinite or otherwise would be
considered unacceptable for applications filed pursuant to
Sections 1 or 44. Thus, although applicant suggests by the
statement “The amendment of the goods and services in a
Madrid Protocol application is addressed in the rules,”
brief, p. 11, with a citation to Trademark Rule 2.71(a),
that this rule is specific to Section 66(a)-based
applications, Trademark Rule 2.71(a) in fact applies to all

3 The quotes cited in this opinion are identified with the page
numbers shown in applicant’s supplemental appeal brief, filed
November 4, 2011. That brief is virtually identical to
applicant’s initial brief, filed September 30, 2010, except that
it reflects that an objection to one of the items in the
identification was withdrawn in the interim.
Ser. No. 79041165
4
trademark applications, irrespective of the basis on which
they are filed. In particular, that section of Rule 2.71
provides that “the applicant may amend the application to
clarify or limit, but not to broaden, the identification of
goods and/or services.” This rule makes no provision that
applications based on Section 66(a) are entitled to employ
identifications of goods that are indefinite or are broader
than identifications in applications with a different
basis.4
Applicant claims that the Trademark Rules acknowledge
that:
the IB of WIPO reviews an identification of goods
and services for compliance with international
agreements, and controls the content of an
identification of goods and services in an
International Registration:
Responses to International Bureau notices of
irregularities in the classification or
identification of goods or services in an
international application must be submitted
through the Office for forwarding to the
International Bureau.

Brief, p. 11, citing Trademark Rule 7.14(b). Applicant
suggests from this that the USPTO must treat as acceptable
any identifications of goods and services accepted by WIPO

4 Indeed, the requirements for a Madrid Protocol application are
more restrictive than those for applications filed pursuant to
Section 1 or Section 44, in that the classification of goods or
services for such an application cannot be changed from the
classification assigned by the International Bureau of the World
Intellectual Property Organization, unless the International
Bureau corrects the classification. See Trademark Rule 2.85(d).
Ser. No. 79041165
5
for an international registration. However, the rule on
which applicant relies relates to “INTERNATIONAL
APPLICATION ORIGINATING FROM THE UNITED STATES,” see title
of Subpart B, not to U.S. applications based on an
extension of protection to international registrations.
The rule has no applicability to whether the United States
has authority to examine the identifications of goods and
services in an international registration for which
protection is requested to be extended to the United
States.
Thus, to the extent that applicant suggests that the
identifications of goods and services in international
registrations must be accepted by the United States Patent
and Trademark Office, even if they do not comply with the
specificity requirements of identifications in U.S.
applications, applicant is incorrect. As Section
1904.02(c) of the Trademark Manual of Examining Procedure
(8th ed.) (hereafter TMEP) states (emphasis in original):
Although the IB [International Bureau] determines
classification of the goods/services, for
purposes of identification, the examining
attorney will examine the identification of
goods/services in a § 66(a) application according
to the same standards of specificity used in
examining applications under §§ 1 and 44 of the
Trademark Act, 15 U.S.C. §§ 1051 and 1126.

Ser. No. 79041165
6
See also TMEP § 1402.01(c). This policy is confirmed by
the World Intellectual Property Organization’s (WIPO)
“Guide to the International Registration of Marks under the
Madrid Agreement and Madrid Protocol” (September 2009):
An Office may object if it considers that a term
is too broad or too vague; such objection might
take the form of a partial refusal, resulting in
the replacement of the broad or vague term by a
more narrow or precise term in the entry in the
International Register as it applies to that
Contracting Party….

B. II. 17.07.
Applicant also argues, in connection with many of the
objected-to identifications, that the term “meets the
statutory requirements, and is narrower than a term
previously approved by WIPO.” See brief, p. 12. We assume
that applicant is asserting that because the particular
term is found in its international registration, it must be
accepted by the United States. We have already discussed
this, and reiterate that the Madrid Protocol does not
require the United States to accept identifications found
in registrations issued by WIPO that do not meet the
requirements for definiteness for all U.S. applications.
To the extent that applicant is asserting that the
objected-to identifications are found in the Alphabetical
Ser. No. 79041165
7
List of Goods and Services that is published by WIPO5 (and
again, applicant has not submitted any evidence that this
is the case), it is within the USPTO’s authority to develop
particularized definitions that are more extensive and
specific than those in the WIPO list. In re Omega SA, 494
F.3d 1362, 83 USPQ2d 1541, 1543 (Fed. Cir. 2007).
Trademark Rule 2.32(a)(6) requires that an applicant
include “[a] list of the particular goods or services on or
in connection with which the applicant uses or intends to
use the mark.” This is the basis for an examining attorney
to refuse an indefinite identification of goods or
services. See TMEP § 1904.04(c)(iv). “[I]t has long been
held that it is within the discretion of the Office to
require that an applicant’s goods be specified with
particularity.” In re Societe Generale des Eaux Minerales
de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on
other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir.
1987). See also In re Omega SA, 83 USPQ2d at 1544: “The
PTO has discretion to determine whether and how a trademark
registration should include a more particularized statement
of the goods for which the mark is to be used”; In re Water

5 The list appears in the “International Classification of Goods
and Services for the Purposes of the Registration of Marks under
the Nice Agreement.”

Ser. No. 79041165
8
Gremlin Co., 635 F.2d 841, 208 USPQ 89 (CCPA 1980): “It is
within the discretion of the PTO to require that one’s
goods be identified with particularity.”
Another argument made by applicant with respect to a
number of the objected-to terms is that the item is known
to the trade, e.g., “Electronic chip cards for use in
mobile communication devices are known to the trade,”
brief, p. 13; “The relevant trade recognizes electronic
chip cards that are used in communication.” Brief, p. 15.
First, it should be noted that the identification should
use language that is “understandable to the average person
and should not require an in-depth knowledge of the
relevant field.” TMEP § 1402.01. “An identification may
include terms of art in a particular field or industry,
but, if these terms are not widely understood by the
general population, the identification should include an
explanation of the specialized terminology.” Id. However,
even if the term would be understood in general by the
public, and we accept that “electronic chip cards for use
in mobile communication devices” would be generally
understood by the public at large, the requirement for
specificity of the identification is not necessarily
satisfied by this alone. For example, those in the trade
and the public at large would understand the identification
Ser. No. 79041165
9
“computer programs” to identify computer software. But
that identification is not specific as to the nature or
purpose of the computer programs. Computer programs for
the purpose of transcribing music are very different from
computer programs for electronically trading securities,
and similar marks for each of these items could likely
coexist without confusion; however, if a party were allowed
to identify its computer programs for the purpose of
transcribing music as just “computer programs,” confusion
would be found if the same or a similar mark was used for a
trading securities program. See In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992) (because the cited registration was
for “computer programs recorded on magnetic disks,” without
any limitation as to the kind of programs or field of use,
Board had to assume that the goods encompassed all computer
programs). Thus, the USPTO requires greater specificity as
to the nature of or purpose of computer programs. See TMEP
§ 1402.03(d).
The examining attorney has seemingly objected to
certain identifications because they are not acceptable
identifications under the standards of the USPTO’s
Acceptable Identification of Goods and Services Manual (ID
Manual). To the extent that the examining attorney’s
objection is based solely on the fact that an
Ser. No. 79041165
10
identification is not listed in the ID Manual, simply
because an item is not listed in the ID Manual does not
mean that the identification is unacceptable. As the
information on the USPTO’s website describing the
Acceptable Identification of Goods and Services Manual
states, “[t]he listing [in the Manual] is not exhaustive,
but is intended to serve as a guide to both examining
attorneys in acting on applications and to filers in
preparing applications.”
www.uspto.gov/trademarks/resources/index.jsp. However, to
the extent that the examining attorney objects to certain
identifications because they do not meet the standards set
forth in the Manual, it is appropriate to use the Manual
for guidance as to whether an identification is acceptable.
We turn now to the specific identifications to which
the examining attorney has objected. The examining
attorney, in his brief, has discussed the objected-to
identifications by grouping the items with applicant’s
arguments, and we will do the same, and also make our
findings with respect to the particular identification.
The identifications to which the examining attorney
objects are as follows:
A. Goods in International Class 9

Ser. No. 79041165
11
1. Machine readable recording mediums for use in
mobile applications, namely, encoded electronic
chip cards having an integrated circuit and
containing programming used for storing,
processing and providing data and programs

The examining attorney asserts that this
identification is indefinite because it does not specify
what is meant by the word “programs” in terms of specifying
the function or purpose for the programming or, if the
programming is content or field specific, the field of use.
In particular, he asserts that the identification fails to
indicate what types of programs are being provided beyond
indicating that they are for use in the field of mobile
applications. He points to the USPTO’s ID Manual, stating
that it requires that identifications for encoded
electronic chip cards containing programming specify the
function or purpose and, if the programming is content or
field specific, the field of use.
Based on the last Office action, issued on July 26,
2011, in which the examining attorney stated that an
acceptable identification would be “machine readable
recording mediums for use in mobile applications, namely,
encoded electronic chip cards having an integrated circuit
and containing programming used for storing, processing and
providing data,” it appears that the problem with the
Ser. No. 79041165
12
applicant’s identification is the phrase “and programs” at
the end of the identification.
Applicant states that “electronic chip cards
containing ‘programs’ are known to the trade,” and that
“the chip cards may be capable of storing any program.”
Brief, p. 12.
Although “programs” or “computer programs” are, per
se, such a broad category that they would require greater
specificity, applicant’s identification is not for
“programs,” but for encoded electronic chip cards that
contain programming used for storing, processing and
providing data and programs. The “programs” obviously
relate to the electronic chip cards, and just as it is
acceptable to identify electronic chip cards as for
storing, processing and providing data without limiting the
data to a field or purpose, it is acceptable to identify
the programs in the same way. We therefore find this
identification to be definite.
2. Coded telecommunication cards for use in mobile
applications, namely, encoded electronic chip
cards for use in mobile communication devices;
coded cards having a contactless interface,
namely, encoded electronic chip cards having an
antenna for use in contactless communications
systems.

The examining attorney objects to this identification
because it does not specify the function or purpose of the
Ser. No. 79041165
13
goods. Noting applicant’s argument that “the encoded
electronic chip cards are for use in communication systems,
which identifies their function or purpose,” the examining
attorney considers this inadequate because “although the
wording ‘for use in [contactless] communication systems’
identifies the goods’ field of use, it does not specify the
function or purpose of the goods.” Brief, unnumbered p. 4.
The examining attorney also addresses applicant’s assertion
that electronic chip cards for use in mobile communication
devices are known to the trade by saying that this is
insufficient to establish the requisite specificity for the
identification.
The examining attorney suggested, as an acceptable
identification in the July 26, 2011 Office action, “coded
telecommunication cards for use in mobile applications,
namely, encoded electronic chip cards for use in mobile
communication devices, namely, for identifying particular
users of computers or mobile telephones; coded cards having
a contactless interface, namely, encoded electronic chip
cards having an antenna for use in contactless
communications systems, namely, for identifying particular
users of computers or mobile telephones.” The additional
wording suggested by the examining attorney is shown in
bold type.
Ser. No. 79041165
14
It appears to us that the examining attorney’s
objection to the identification of the coded communication
cards is that it is not found in the ID Manual, and that
the examining attorney is attempting to squeeze it into one
of the “acceptable” identifications by adding wording that
is contained in an identification that is in the Manual,
since an acceptable identification listed in the Manual is
“encoded electronic chip cards for {indicate use, e.g.,
identifying particular users of computers and mobile
telephones},” and the examining attorney has suggested the
example given in the Manual for applicant’s identification.
However, to be considered definite, an identification for
goods of this type need only identify the use of the chip
cards, and “for use in mobile communication devices” is
sufficient for this.
Similarly, the “coded cards having a contactless
interface” are also followed by more specific explanation,
but again the examining attorney has required further
specificity, seemingly only because of an attempt to
approximate an identification in the ID Manual.
We find that both of the identifications are
acceptable.
3. Computer software for applications in computer
networks, namely, computer software for
processing transactions and data for mobile
Ser. No. 79041165
15
applications adaptable with internet, intranet
and extranet applications.

The examining attorney asserts that this
identification is indefinite because it does not indicate
the specific nature of the “transactions” which are
processed by the software and thus does not indicate the
goods’ field of use. He asserts that, as identified, the
software could be used for processing electronic business
transactions, for processing payment and debt transactions,
or for providing an online database in the field of
transaction processing to upload transactional data. The
examining attorney suggested the following identification
in the July 26, 2011 Office action (the additional wording
suggested by the examining attorney is shown in bold type):
“computer software for applications in computer networks,
namely, computer software for processing of electronic
business transactions and data for mobile applications
adaptable with internet, intranet and extranet
applications.” Thus, the examining attorney finds the
identification indefinite because it uses the phrase
“processing transactions” instead of specifying that the
transactions are “electronic business transactions.”
The identification as written provides the
function/purpose of the software, that is, that it
Ser. No. 79041165
16
processes transactions and data, and the field of use, for
mobile applications. As such, it is sufficiently definite,
and we find it to be acceptable. See TMEP § 1402.03(d).
4. Computer software for telecommunication in
mobile applications with encoded electronic
chip card-activated mobile phones and
associated electronic chip cards and mobile
phones.

The examining attorney objects to this identification
because it does not indicate the function or purpose of the
software. Noting that “neither ‘communication software’
nor software ‘limited to use in mobile applications’ is an
acceptable identification under the ID Manual’s standards,”
the examining attorney points out that the Manual requires
applicants to indicate the purpose of software for use in
communications, giving as examples “communication software
for providing access to the Internet” and “computer
communications software to allow customers to access bank
account information and transact bank business.” Brief,
unnumbered p. 6. The examining attorney argues that
applicant’s identification is so broad that it would
encompass these two examples, as well as other types of
communications software used with mobile applications, and
suggested, in the July 26, 2011 Office action, that adding
the phrase “namely, for texting video and audio
conversations” would make the identification acceptable.
Ser. No. 79041165
17
We disagree with the examining attorney. The
identification includes both a purpose (telecommunication)
and a field (encoded electronic chip card-activated mobile
phones). The additional phrase suggested by the examining
attorney is not necessary in terms of providing more
information as to the item’s use and field. Applicant’s
identification is acceptable.
5. Computer operating system software and computer
application software for mobile applications
for blank and encoded electronic chip cards
having an integrated circuit; computer software
for data processors for mobile applications in
communication with encoded electronic chip
cards.

The examining attorney states in his brief that the
wording “computer operating system software” is acceptable6;
the objection is to the part of this identification
beginning with the phrase “computer application software.”
It is the examining attorney’s position that the
identification does not indicate the specific nature of the
application software or the purpose of the computer
software for data processors. The examining attorney
objects to the phrase “computer application software for

6 The exact statement is “The wording ‘computer operating system
software and computer application software for mobile
applications for blank and encoded electronic chip cards having
an integrated circuit; computer software for data processors for
mobile applications in communication with encoded electronic chip
cards’ is not acceptable—except for the wording ‘computer
operating system software’…” Brief, unnumbered p. 7.
Ser. No. 79041165
18
mobile phones” because it does not indicate the purpose or
function of the software, and that even though applicant
identifies the software as being for use “with encoded
electronic chip cards having an integrated circuit,” the
identification is still indefinite because, although it
indicates the goods’ field of use, it fails to describe the
function or purpose of the software. As for the “software
for data processors for mobile applications,” the examining
attorney contends that, even though the identification
states that it is computer software for data processors,”
this is not the same as saying that the software is used
for data processing, but only that the software is for use
with processors. The examining attorney suggested, in the
July 26, 2011 Office action, the following identification
(added wording shown in bold type, wording to be deleted is
struck through): “computer operating system software and
computer application software for mobile applications for
blank and encoded electronic chip cards having an
integrated circuit; software for data processors data
processing software for mobile applications in
communication with encoded electronic chip cards.”
Applicant argues that the computer application
software is for mobile applications, and is further limited
for blank and electronic chip cards, and that the software
Ser. No. 79041165
19
for data processors is identified as being for mobile
applications, and is further limited to those in
communication with encoded electronic chip cards.
The computer application software is distinct from the
computer operating system software, and therefore the
identification must include a purpose or function and a
field of use for the computer application software. See
TMEP § 1402.03(d), which discusses identification of
computer programs. Although applicant’s identification
specifies the field--mobile applications--it does not
indicate the purpose or function of the computer
application software, and thus is indefinite.
As for the identification “computer software for data
processors for mobile applications in communication with
encoded electronic chip cards,” it is not clear to us that
this identification is in fact different from data
processing software, which the examining attorney would
accept. In any event, the identification indicates the
purpose of the software (for data processors … in
communication with encoded electronic chip cards” and the
field (mobile applications) and therefore is acceptable.
See TMEP § 1402.03(d).
Accordingly, the phrase “computer application
software” in the identification “computer operating system
Ser. No. 79041165
20
software and computer application software for mobile
applications for blank and encoded electronic chip cards
having an integrated circuit” is not acceptable, but the
portion of the identification “computer operating system
software for mobile applications for blank and encoded
electronic chip cards having an integrated circuit,” and
the identification “computer software for data processors
for mobile applications in communication with encoded
electronic chip cards” are acceptable.
6. Computer programs for developing, managing and
maintaining all the above-mentioned kinds of
software for mobile applications.

The examining attorney’s objection to this
identification is that it does not indicate what is meant
by the term “maintaining” software. In the July 26, 2011
Office action the examining attorney suggested the
following identification: “computer programs for
developing, managing and monitoring all the above-mentioned
kinds of software for mobile applications,” i.e.,
substituting the word “monitoring” for “maintaining.”
Applicant explains that the word “maintaining” is
defined in conventional dictionaries, and that:
if software is malfunctioning, then it may be
maintained using these computer programs. If
software requires periodic maintenance, then it
may be maintained by these computer programs.
The relevant trade recognizes that, for example,
Ser. No. 79041165
21
application software may from time to time be
maintained by upgrading it to be compatible with
upgrades in operating system software.

Brief, p. 15.
However, the examining attorney objects that
“applicant has failed to explain how computer software may
be maintained using these computer programs.” Brief,
unnumbered p. 9. The examining attorney notes that the ID
Manual includes several entries for services that involve
maintaining computer software but does not include entries
for goods used for this purpose, and that, although the
Manual includes an entry for “computer software to maintain
and operate a computer system,” the Manual does not
reference computer programs that are used for maintaining
software itself. As a result, the examining attorney
contends that applicant has failed to provide the degree of
particularity necessary to clearly identify what is meant
by the wording programs for “maintaining all of the above-
mentioned kinds of software for mobile applications.”
The basis of the examining attorney’s objection
appears to be that applicant’s identification is not listed
in the ID Manual. However, as we previously stated, the ID
Manual does not purport to list all acceptable
identifications of goods and services, and the fact that an
identification is not in the Manual does not, per se, make
Ser. No. 79041165
22
it indefinite or unacceptable. The word “maintaining” is
found in acceptable identifications listed in the Manual,
e.g., “application service provider, namely, hosting,
managing, developing, analyzing, and maintaining
applications, software, and web sites of others in the
fields of advertising and marketing.” Given that the ID
Manual itself treats “maintaining” as a term whose meaning
in the context of computer software would be understood,
and that “… maintaining …software” is part of an acceptable
identification, it appears that the examining attorney is
arguing that “maintaining” computer software is done as a
service, but not as something that computer software itself
would do.
The examining attorney has not provided any evidence
to show that computer software cannot perform the function
of maintaining other computer software, and “computer
software to maintain and operate computer system” and
“computer utility programs [program performs computer
maintenance work]7 are, in fact, listed in the Manual as
acceptable identifications. Moreover, applicant’s
identification identifies the function of the computer
software with the requisite specificity. An identification

7 The bracketed language is explanatory, and is not part of the
required language for an acceptable identification.
Ser. No. 79041165
23
need not have such a degree of particularity that the
details of how the software will create fixes or institute
upgrades for other software must be included.
Accordingly, we find that this identification is
acceptable.
B. Services in International Class 38
Telecommunications services, namely,
personalization and configuring of mobile phones
and other telecommunication terminals by way of
contactless communication, namely, PDAs, smart
phones, notebook computers, pagers, and handheld
computers for others by over-the-air-methods,
namely, GSM, UMTS, CDMA, GPRS, RFID, open
wireless protocols for exchanging data over short
distances, and WiFi

The examining attorney objects to this identification
because it does not indicate what is meant by the wording
“personalization and configuration of mobile phones and
other telecommunication terminals by way of contactless
communication.” The examining attorney states that the ID
Manual does not include any entries for services involving
this phrase, and that applicant has not offered an
explanation of what is meant by this wording.8

8 Noting applicant’s argument that its identification provides
“a higher degree of specificity than even suggested by the online
Trademark ID Manual, which indicates that ‘telecommunication
services’ are no longer acceptable, but ‘digital network
telecommunication services’ are acceptable, applicant’s brief,
p. 16, the examining attorney points out that applicant has not
offered an explanation of how the objected-to wording in its
identification relates to “digital network telecommunications
services.” We do not view applicant’s comments as stating that
Ser. No. 79041165
24
First, as we have previously stated, the fact that the
identification does not appear in the ID Manual does not
mean that the identification is not acceptable. Further,
after reviewing the numerous Office actions, (and there
have been eight Office actions, all with respect to the
acceptability of the identification of goods and services),
we have the very strong impression that the examining
attorneys examining this application have kept moving the
goalposts on applicant.
The examining attorney now finds that the phrase
“personalization and configuring” to be indefinite,
although in the first Office action, mailed August 28,
2007, the examining attorney suggested, as an acceptable
identification, using these very words (emphasis added):
“telecommunications services, namely, personalization and
configuring of mobile phones and other telecommunication
terminals for others by over-the-air methods.” In the
Office action of October 21, 2008, the examining attorney
added the requirement that applicant specify the types of
devices, e.g., pagers, and the types of “over-the-air
methods,” but never required any further specification
regarding the personalization and configuring, and the same

its services are digital network communications services, but
only that its identification has even more specificity than the
acceptable “digital network communications services.”

Ser. No. 79041165
25
was true for the May 1, 2009 Office action, in which the
examining attorney continued to accept “personalization and
configuring” in the identification, only requiring
additional wording about the devices, e.g., notebook
computers instead of notebooks, and substituting the common
commercial name for the term “Bluetooth” that applicant had
submitted as one of the “over-the-air methods.” It was not
until the Office action of July 10, 2009, i.e., the fifth
Office action, that the examining attorney first indicated
that the specific nature of the personalization and
configuring had to be included in the identification.
The identification provided by applicant details the
types of devices that are personalized and configured, and
the methods by which this is done. One would also
understand from the identification that the device would be
“personalized” and “configured” to reflect the needs of the
particular user. Although the identification does not list
the particular configurations or applications that would be
available under this service, we consider the
identification to be sufficiently detailed to allow those
viewing applicant’s application or a future registration to
Ser. No. 79041165
26
understand the nature of the services, and therefore find
the identification to be acceptable.9
C. Services in International Class 42

Data management in computer networks, namely,
processing and recording of data in connection
with the above-mentioned kinds of software and in
connection with a transmission of software via
contact-less interfaces of mobile devices,
namely, PDAs, smart phones, notebook computers,
pagers, handheld computers and chip cards,
namely, device management, mobile device
management, and card and application management.

The examining attorney objects to this identification
because it does not sufficiently identify the nature of the
services. It is the examining attorney’s position that the

9 In a footnote to his brief the examining attorney has objected
to the inclusion of the term “WiFi” in the identification,
because the examining attorney states that it is a registered
trademark not owned by applicant. This is the first time that
the examining attorney has mentioned the unacceptability of
including this term and, moreover, the examining attorney
suggested identifications including this term starting with the
May 1, 2009 Office action. In fact, in the July 10, 2009 Office
action, although the examining attorney objected to the inclusion
of “WiMAX” in applicant’s then-proposed identification because it
was a registered mark, he said nothing about the inclusion of
“WiFi.” The examining attorney did not make any evidence of
record to show that WiFi is a registered trademark, and therefore
there is no basis for us to find that the identification is
unacceptable because it contains this term.
We must add that we are troubled that an examining attorney
would wait until his brief to make a requirement, when it is
obviously too late for the applicant to respond. Cf. In re
Future Ads LLC, 103 USPQ2d 1571, 1573 (TTAB 2012), (examining
attorney raised for the first time in her brief an argument based
on evidence submitted for another purpose; Board viewed this as
“poor examination practice and strongly urge[d] that such a
practice not be followed in the future”). This is particularly
true in the present case because applicant listed “WiFi” as part
of the specific methods by which its personalization and
configuration services were rendered because of the insistence of
the examining attorney to specify these methods; applicant’s
original identification used the phrase “over-the-air methods.”
Ser. No. 79041165
27
ID Manual requires that the subject matter of the data
management services be indicated, e.g., “data management
services for use in debt collection, namely, electronic
data collection and on-line claims management” and
“database management for others of a database comprised of
data collected through a billfish tagging program for
research purposes.” On July 26, 2011, the examining
attorney suggested as an acceptable identification, “data
management in computer networks, namely, processing of
audio for others and recording of data in connection with
the above-mentioned kinds of software and in connection
with a transmission of software via contact-less interfaces
of mobile devices, namely PDAs, smart phones, notebook
computers, pagers, handheld computers and chip cards,
namely, device management, mobile device management, and
card and application management.” In other words, rather
than “processing of and recording of data,” the examining
attorney suggests “processing of audio for others” as a
separate service from recording of data. Applicant
considers the limitation of the data to “audio” to be
inadequate, and explains that its services are data
management in computer networks.
We are at a loss to understand why, if the
identification would be acceptable if applicant were to
Ser. No. 79041165
28
limit the “processing” to audio, the identification as
written is not acceptable simply because the “processing of
data” is not limited to audio. Mobile devices use non-
audio data, such as text and images, and the proposed
limitation of the identification not only does not reflect
the applicant’s services, but it does not serve to make the
identification more definite. To the extent that the
examining attorney’s assertion that the ID Manual requires
that the subject matter of the data management services be
indicated, the mere listing of some identifications in
which the subject matter is listed does not make this a
requirement for all identifications. Certainly the
identification suggested by the examining attorney in the
July 26, 2011 Office action shows that the inclusion of the
subject matter is not determinative of the acceptability of
the identification. We find the applicant’s
identification is acceptable.
Decision: We affirm the examining attorney’s
refusal to accept the following identification in
Class 9:
computer application software for mobile
applications for blank and encoded electronic
chip cards having an integrated circuit.

We reverse the refusal that the remaining identifications
of goods are indefinite. Accordingly, after the time for
Ser. No. 79041165
29
appeal has passed, the application will be forwarded to
publication for the following goods and services:10
Class 9:
electrical devices, namely, data processors for
communications with electronic chip cards having an
integrated circuit and electronic chip cards having a
contactless interface; data processing devices,
namely, data processors for writing data into and onto
blank and encoded electronic chip cards, for reading
data out of and from encoded electronic chip cards,
and for displaying data from an encoded electronic
chip card on a display; data processing devices,
namely, data processors for personalizing blank and
encoded electronic chip cards; machine readable
recording mediums for use in mobile applications,
namely, encoded electronic chip cards having an
integrated circuit and containing programming used for
storing, processing and providing data and programs;
cards having an integrated circuit for use in mobile
applications, namely, encoded electronic chip cards
having microprocessors and containing programming for
communication with external data processors and with
mobile radio terminals; coded telecommunication cards
for use in mobile applications, namely, encoded
electronic chip cards for use in mobile communication
devices; coded cards having a contactless interface,
namely, encoded electronic chip cards having an
antenna for use in contactless communications systems;
integrated circuits having characteristic physical
properties for protection against forgery in
connection with encoded electronic chip cards;
electrical devices for encrypting data for cash-less
payment transactions using magnetic stripe cards and
encoded electronic chip cards, both in online
operation and in offline operation; computer software
for applications in computer networks, namely,
computer software for processing transactions and data
for mobile applications adaptable with internet,
intranet and extranet applications; computer software
for telecommunication in mobile applications with

10 Applicant may, if it wishes, submit an amendment to the
identification in Class 38 to substitute a common commercial term
for “WiFi.”
Ser. No. 79041165
30
encoded electronic chip card-activated mobile phones
and associated electronic chip cards and mobile
phones; computer software programs for activating,
changing, testing and displaying data and software
structures stored in telecommunication cards; computer
software for encrypting and signing data; computer
operating system software for mobile applications for
blank and encoded electronic chip cards having an
integrated circuit; computer software for data
processors for mobile applications in communication
with encoded electronic chip cards; computer programs
for developing, managing and maintaining all the
above-mentioned kinds of software for mobile
applications; recording mediums, namely, data
recorders, used in connection with the above-mentioned
software for mobile applications

Class 36:
leasing of software, namely, closed-end leasing of
software

Class 38
providing of access to data stored electronically in
computer networks for remote consultation; electronic
transmission of data via computer networks;
telecommunications services, namely, personalization
and configuring of mobile phones and other
telecommunication terminals by way of contactless
communication, namely, PDAs, smart phones, notebook
computers, pagers, and handheld computers for others
by over-the-air-methods, namely, GSM, UMTS, CDMA,
GPRS, RFID, open wireless protocols for exchanging
data over short distances, and WiFi

Class 42
developing, programming, installing and maintaining of
software; consultation in the field of computer
software, namely, the technology of mobile
applications, and the application of the above-
mentioned kinds of software for transmission of
software via contact-less interfaces; rental of
software; technical consultation on the securing of
data against imitation, falsification and unauthorized
eavesdropping in electronic communication systems and
preparation of concepts for such technical
consultation, namely, provision of computer security
information; services of a certifying authority,
Ser. No. 79041165
31
namely, encryption, decryption and authentication of
data, in the nature of an internet trust center,
namely, issuance and authentication of digital keys,
encryption algorithms and digital signatures; analog
recording of data, namely, recording data for others
on a magnetic medium for electronic storage; digital
recording of data, namely, recording of data for
others on digital media, namely, compact discs, floppy
discs, memory sticks, RAM and hard drives, for
electronic storage; data management in computer
networks, namely, processing and recording of data in
connection with the above-mentioned kinds of software
and in connection with a transmission of software via
contact-less interfaces of mobile devices, namely,
PDAs, smart phones, notebook computers, pagers,
handheld computers and chip cards, namely, device
management, mobile device management, and card and
application management

Class 45
Licensing of computer software