United Business Media LLC

Trademark Trial and Appeal Board

Apr 21, 2009

No. 78537927 (T.T.A.B. Apr. 21, 2009)

Mailed: April 21, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re United Business Media LLC
________

Serial Nos. 78537905 and 78537927
_______

Susan L. Heller of Greenberg Traurig, LLP for United
Business Media LLC.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications have been filed by United Business Media
LLC to register ANNUAL COMPUTER SECURITY CONFERENCE &
EXHIBITION (in standard character form) as a mark for
“arranging and conducting business exhibitions and
conferences in the fields of information technology,
computer security and network security” in Class 351 and

1 Serial No. 78537905, filed on December 23, 2004, which alleges
a date of first use anywhere and in commerce of November 8, 1993.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78537905 and 78537927
2
“providing information online relating to educational
exhibitions and conferences in the fields of information
technology, computer security and network security;
providing online catalogs relating to exhibitions and
conferences in the fields of information technology,
computer security and network security” in Class 41.2
Each application originally sought registration of the
mark on the Principal Register. The examining attorney
refused registration under Section 2(e)(1) of the Trademark
Act on the ground that the mark, when used in connection
with the identified services, is merely descriptive of
them. Applicant amended each application to seek
registration under Section 2(f) of the Trademark Act and
disclaimed the words CONFERENCE & EXHIBITION.
The examining attorney then required a disclaimer of
COMPUTER SECURITY CONFERENCE & EXHIBITION on the ground
that it is generic for the identified services. Pursuant
to Trademark Act Section 6, the examining attorney issued a
final refusal in each application due to applicant’s
failure to comply with the requirement for a disclaimer.
15 U.S.C. §1056.

2 Serial No. 78537927, filed December 23, 2004, which alleges a
date of first use anywhere and in commerce of November 11, 1996.
Ser Nos. 78537905 and 78537927
3
Applicant has appealed and briefs have been filed.
Because the appeals involve the same applicant and common
issues of law and fact, we have treated them in a single
opinion.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6. Merely descriptive
or generic terms are unregistrable under Trademark Act
Section 2(e)(1). Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); and In re Box Solutions Corp., 79 USPQ2d 1953
(2006).
As previously indicated, applicant amended each
application to seek registration under Section 2(f) and
disclaimed the words CONFERENCE & EXHIBITION. Inasmuch as
applicant has conceded that the words CONFERENCE &
EXHBITION are generic for its identified services, the sole
issue in this case is whether the term COMPUTER SECURITY
also is generic and must be disclaimed.3

3 Because applicant amended each application to seek registration
under Section 2(f) and the examining attorney has accepted
applicant’s evidence in support thereof, the issue of acquired
distinctiveness is not before us.
Ser Nos. 78537905 and 78537927
4
The examining attorney has the burden of proving
genericness by “clear evidence” thereof. See In re Merrill
Lynch Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987). The critical issue is to
determine whether the record shows that members of the
relevant public primarily use or understand the term at
issue to refer to the category or class of goods or
services. H. Marvin Ginn Corp. v. International Ass’n of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). The Federal Circuit has set forth a two-part
test to determine whether a term is generic. “First, what
is the genus of goods or services at issue? Second, is the
term sought to be registered … understood by the relevant
public primarily to refer to that genus of goods or
services?” Id. Evidence of the public’s understanding of
a term may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers and other publications. See Merrill Lynch,
supra, 4 USPQ2d at 1143, and In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir.
1985).
As to the first question, what is the genus of
services at issue, based on the record in this case, we
conclude that computer security conferences is the
Ser Nos. 78537905 and 78537927
5
appropriate genus in the ‘905 application and providing
online conferences and catalogs in the field of computer
security is the appropriate genus in the ‘927 application.
We must consider then whether the relevant public would
understand the term “computer security” as referring to the
genus of services in each application. Here, the relevant
public would include persons working in the computer field
such as IT directors, programmers, network and system
administrators, web developers, and security system
administrators; and business owners and managers, law
enforcement personnel, and educators. We add that although
applicant’s identified services also relate to other
fields, i.e., information technology and network security,
if the term “computer security” is generic as to part of
the services applicant offers, the requirement for a
disclaimer of such term is proper. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 (TTAB 2002)
[“[I]f applicant’s mark BONDS.COM is generic as to part of
the services applicant offers under its mark, the mark is
unregistrable”].
Ser Nos. 78537905 and 78537927
6
The examining attorney’s evidence4 includes a
“Wikipedia” entry for “Computer security” which states, in
relevant part:
Computer security is the effort to create a
secure computing platform, designed so that
agents (users or programs) can only perform
actions that have been allowed. This involves
specifying and implementing a security policy.
The actions in question can be reduced to
operations of access, modification and deletion.
Computer security can be seen as a subfield of
security engineering, which looks at broader
security issues in addition to computer security.

In addition, we judicially notice that the term
“computer security” is defined in the Microsoft Computer
Dictionary (5th ed. 2002) as “[t}he steps taken to protect a
computer and the information it contains;” and in Webster’s
New World Hacker Dictionary (2006) as:
The prevention of or protection against access to
information by unauthorized recipients, and the
unauthorized destruction of or alteration of
information. Another way to state it is to say
that computer security is the ability of a
computer system to protect information with
respect to confidentiality and integrity.5

The examining attorney also submitted excerpts from
LexisNexis and the internet, some of which are set out

4 We note that the evidence is the same in each application.
5 The Board may take judicial notice of dictionary definitions.
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).
Ser Nos. 78537905 and 78537927
7
below with emphasis added, where the term “computer
security” is used to refer to a type of conference.
Worried about data-stealing and identity theft,
businesses are paying good money to have old
computer disk drives beaten to a pulp so their
data can’t be stolen. At the Secure 360 computer
security conference in St. Paul, Minn., last
month, Charlie Gaetz held up a plastic baggie
full of metal confetti.
Monterey County Herald (California), June 5, 2008

Beginning today, some of the technology
industry’s top minds will gather in San Francisco
at an annual computer security conference to
discuss and show off new ways to combat the
growing threat to PCs.
Austin American-Statesman, February 5, 2007

The code quickly made its way into researchers’
hands. Suspected vulnerabilities were confirmed,
and never-contemplated sloppiness was added to
the list of concerns. At a computer security
conference, the AccuVote’s anatomy was analyzed
closely by a team … They described how the
AccuVote’s software design rendered the machine
vulnerable to manipulation by smart cards.
The New York Times, September 24, 2006

Now that the Mac can natively run Windows XP, is
it open to XP’s vulnerabilities? Some security
experts think so. At the 2006 summer Black Hat
computer security conference in Las Vegas, two
researchers showed a video which demonstrated a
Mac Book being hacked via its wireless card.
Technology & Learning, September 1, 2006

There’s a clear distinction between hackers and
computer criminals, even if that’s not widely
recognized, says Jeff Moss, director of Black Hat
(owned by CMP Technology publisher of Information
Week), which runs computer security conferences
and training events.
Information Week, July 17, 2006

Ser Nos. 78537905 and 78537927
8
Experts at last week’s What the Hack computer
security conference in the Netherlands released
software called Car Whisperer, hoping to
demonstrate the flaws of Bluetooth.
Pittsburgh Post-Gazette, August 6, 2005

In a speech at the RSA computer security
conference, Mr. Gates, Microsoft’s chairman, said
the company was making progress in its fight
against spam, adding that “phishing” software
scams were the fastest-growing security problem
the company faced. He said the company was
currently spending about $2 billion a year on
computer security development and research.
The New York Times, February 16, 2005

At the Defcon computer security conference in
July, 81% of computer professionals polled said
that they had “no confidence or little
confidence” in the “security and reliability” of
electronic voting machines.
Los Angeles Times, September 24, 2004

Keyboards aren’t the only part of a computer with
the potential to spill a secret. At a computer
security conference in May in Switzerland, Eran
Tromer of the Weizmann Institute reported that an
Intel Celeron microprocessor, the silicon engine
powering many budget consumer computers, emits
high-frequency noise.
The Baltimore Sun, July 19, 2004

Dr. Reiter’s research interests include all areas
of computer and communications security and
distributed computing. He regularly publishes
and serves on conference organizing committees in
these fields, and has served as program chair for
the flagship computer security conferences of the
IEEE, the ACM, and the Internet Society.
www.ists.dartmouth.edu

Of course, other computer security conferences
have also evolved, including SANS, CSI, Usenix,
TISC, MIS’s Infosec World and various vendor-
sponsored conventions, such as the RSA Data
Security Conference.
www.thiemeworks.com
Ser Nos. 78537905 and 78537927
9

Computer Security Resources Clearinghouse A NIST
site that contains comprehensive listings of
upcoming computer security conferences and
workshops.
www.wiley.com

1988: ACSAC is a Recognized Conference
By the end of the third conference the conference
had matured to a point where its role in the
computer security community was recognized. This
role is to provide a forum at which issues
regarding applications of computer security to
planned programs and systems may be explored in a
technically supportive atmosphere. And second to
provide education experiences in computer
security applications. The format of two days of
tutorials followed by technical sessions of
papers and panels was the most effective way to
execute this role and made ACSAC distinguishable
from the growing numbers of computer security
conferences.
www.acsa-admin.org

Introduction to Software Security
…
This webpage lists the papers that we will
discuss over the course of the semester. We will
be discussing both class computer security
papers, and recent papers from premier computer
security conferences …
www.cs.rutgers.edu

Techno Conferences
…
Mr. Gula was the original author of the Dragon
intrusion detection system, and founded Network
Security Wizards.
…
Mr. Gula has presented at a variety of computer
security conferences including SANS, Blackhat,
HOPE and Techno Security.
www.thetrainingco.com

Call for Papers: CSC 2008 – The Second Annual
Computer Security Conference will be held in
Myrtle Beach, SC on April 16-18, 2008.
Ser Nos. 78537905 and 78537927
10
Participants are encouraged to submit research
papers, workshops, tutorials and poster
presentations concerning processes, methods, and
technologies in all areas of computer and
information security.
www.computersecurityconference.com

LayerOne is a computer security conference
located in Pasadena, California. We are
currently in our third year of operation. We are
featuring speakers from across the globe and on
topics ranging from shellcoding and VoIP Security
to Responsible Disclosure and SCADA Systems.
http://layerone.info

14th Annual FIRST Computer Security Conference
Announcement
The Forum on Incident Response and Security Teams
(FIRST) will hold the 14th Annual FIRST Computer
Security Conference at the Hilton Waikoloa Beach
Village on the Big Island of Hawaii June 23-28,
2002.
The conference is international in scope and
attendance, with presentations on the latest in
incident response and prevention, vulnerability
analysis, and computer security, given by
recognized experts in the field of computer
security.
www.edu.cn/news

The Tenth Annual International Techno Security
Conference will be even bigger and better than
last year’s event. What many people say is the
best overall computer security conference at any
price has become an even better value for your
training and exhibiting dollar.
www.thetrainingco.com

UT Arlington Calendar
October 3, 2007
8:00 am to 4:00pm
2007 Annual Computer Security Conference
(Conference/Symposia)
A conference that provides information on how to
protect your computer, your online information
and your identity from fraud.
www.uta.edu/events
Ser Nos. 78537905 and 78537927
11

Headline: Computer Security Conferences Attract
Both Hackers, Anti-Hackers
The middle-aged G-men who wear crisp suits and
consort with teenage hackers sporting purple hair
can make the two conferences that will converge
in Las Vegas this week look like a scene from a
science-fiction movie.
www.foxnews.com

Gotham Digital Science (GDS) is an international
security services company specializing in
Application and Network Infrastructure security,
and Information Security Risk Management….GDS
engineers are also frequently invited speakers at
company sponsored training events, public
organization meetings, and well-known computer
security conferences and seminars such as
BlackHat, SANS, Vanguard, RSA, OSCON, and ISACA.
www.gdssecurity.com

The 2007 season of computer security conferences
and exhibitions kicked off with London’s
Infosecurity Europe 2007, held in April and will
be followed by similar events in Canada, USA,
Russia and France roughly one each month.
www.bloglines.com

Q. How much fun/mischief could you have if you
were “evil” for one day?
A. It used to be common for late-night bar
conversation at computer security conferences:
how would you take down the Internet, steal a
zillion dollars, neutralize the IT infrastructure
of this company or that country, etc. And,
unsurprisingly, computer security experts have
all sorts of ideas along these lines.
http://peterneorr.blogspot.com

Andre is primarily a web application
vulnerability assessor/researcher based in
Phoenix, Arizona…. Andre has been involved in
computer security conferences for over 10 years.
www.tssco-security.com

David Litchfield is recognized as one of the
world’s leading authorities on database
Ser Nos. 78537905 and 78537927
12
security…. He is a regular speaker at a number of
computer security conferences and has delivered
lectures to the National Security Agency.
www.davidlitchfield.com

We also note that there are several references to
“computer security” conferences in the LexisNexis excerpts
from newswire reports and press releases. There is nothing
in the record to indicate that these newswire reports and
press releases have been widely distributed so as to reach
members of the relevant public. We therefore have given
the excerpts from the newswire reports and press releases
limited probative value.
We find that the examining attorney has met her burden
of establishing that the term “computer security” is a
generic term for the services in the ‘905 application of
“arranging and conducting business exhibitions and
conferences in the fields of information technology,
computer security and network security” and the services in
the ‘927 application of “providing information online
relating to educational exhibitions and conferences in the
fields of information technology, computer security and
network security; providing online catalogs relating to
exhibitions and conferences in the fields of information
technology, computer security and network security.” The
examining attorney has presented significant evidence
Ser Nos. 78537905 and 78537927
13
showing the generic use of the term “computer security” for
conferences that feature presentations on such issues as
“new ways to combat the growing threat to PCs,” “the flaws
of Bluetooth,” “phishing software scams,” “issues regarding
applications of computer security,” “processes, methods,
and technologies in all areas of computer and information
security,” and “vulnerability analysis, and computer
security.” In addition, the recitation of services in both
applications specifically uses the term “computer security”
generically to name (partially) the subject matter of
applicant’s conference. Thus, as evidenced by applicant’s
own use of the term “computer security” in the recitation
of services, such term is generic for a conference that
features information on “computer security.” A term that
names the central focus or subject matter of the services
is generic for the services themselves. See In re A La
Vielle Russie Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIANART
generic for particular field or type of art and also for
dealership services directed to that field]; In re Log
Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) [LOG CABIN
HOMES generic for type of building and also for
architectural design services directed to that type of
building and for retail outlets featuring kits for
construction of that type building]; In re Web
Ser Nos. 78537905 and 78537927
14
Communications, 49 USPQ2d 1478 (TTAB 1998) [WEB
COMMUNICATIONS generic for publication and communication
via the World Wide Web, and also for consulting services
directed to assisting customers in setting up their own Web
sites for such publication and communication]; and In re
Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984)
[LAW & BUSINESS incapable of distinguishing applicant’s
services of arranging and conducting seminars in the field
of business law].
We now consider whether applicant has rebutted the
examining attorney’s prima facie case. Once the USPTO sets
forth a prima facie case, the burden shifts to the
applicant to come forward with evidence to rebut the prima
facie case with “competent evidence.” See In re Gyulay,
820 F.2 1216, 3 USPQ2d 1009, 1010 (Fed,. Cir. 1987); In re
R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir.
1984); and In re Teledyne Indus., Inc., 696 F.2d 986, 217
USPQ 9, 11 (Fed. Cir. 1982).
Applicant argues that a significant number of the
LexisNexis and internet excerpts are of little or no
probative value. Specifically, applicant maintains that at
least ten of the excerpts refer to applicant’s own
conference; that at least thirteen of the excerpts refer to
a competitor’s (RSA) conference, yet this competitor does
Ser Nos. 78537905 and 78537927
15
not refer to its services as a computer security
conference; and that several of the excerpts are from blogs
and biographies posted on the internet. Applicant states
that it currently owns ten registrations for marks that
include the term COMPUTER SECURITY which have been
registered in whole or in part, under Section 2(f), for
similar goods and services. The marks include COMPUTER
SECURITY INSTITUTE, COMPUTER SECURITY INSTITUTE and design,
CSI COMPUTER SECURITY INSTITUTE, CSI COMPUTER SECURITY
INSTITUTE and design, COMPUTER SECURITY ALERT, and COMPUTER
SECURITY JOURNAL. Applicant argues that because none of
these registrations contains a disclaimer of the term
COMPUTER SECURITY, it is entitled to register the involved
mark without a disclaimer of the term.
Applicant’s arguments are not persuasive. The
examining attorney’s evidence clearly shows that there is a
type of conference that is referred to as a “computer
security” conference. Furthermore, even if we discount
those references to “computer security” conferences which
plausibly concern applicant, there are numerous references
to “computer security” conferences in this evidence which
are not referring to applicant’s conference. When we
consider the examining attorney’s evidence in its entirety,
it establishes that “computer security” is a term in
Ser Nos. 78537905 and 78537927
16
general use to describe a type of conference, and as we
have noted, applicant itself uses the term “computer
security” generically to name (partially) the subject
matter of its conference. Also, there may be more than one
name for a category of services, and the fact that
applicant’s competitor, RSA, has chosen not to refer to its
services as a computer security conference does not aid
applicant. Insofar as the excerpts from blogs and
biographies are concerned, although they are not
necessarily entitled to the same weight as the excerpts
from LexisNexis and third-party commercial websites, such
excerpts nonetheless confirm the generic nature of the term
“computer security” in relation to applicant’s identified
services.
Applicant’s ownership of other registrations for marks
which include the term COMPUTER SECURITY, without a
disclaimer thereof, is not persuasive of a different result
herein. It is well-settled that the Board is not bound by
prior decisions of trademark examining attorneys, and that
we must decide each case on its own merits based on the
record before us. See, e.g., In re International Flavors &
Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir.
1999); In re Cooper, 254 F.2d 611, 117 USPQ 396, 401 (CCPA
1958) [“… the decision of this case in accordance with
Ser Nos. 78537905 and 78537927
17
sound law is not governed by possibly erroneous past
decisions of the Patent Office”); In re Wilson, 57 USPQ2d
1863 (TTAB 2001); and In re National Retail Hardware
Association, 219 USPQ 851, 854 (TTAB 1983) [“As in Cooper,
we do not have here sufficient facts before us on which to
evaluate whether the previous action of the Examiner which
resulted in issuance of the previous registration was or
was not erroneous. Nevertheless, as Cooper held, it is
sufficient that the facts now before us and the application
to them of sound law persuade us that the mark does not
meet the requirements for registration set forth in
Sections 2(d) and 2(e)(1) of the statue”]. For the reasons
set forth above, we find that the term “computer security”
is generic for applicant’s identified services and that
refusal of registration in the absence of a disclaimer of
COMPUTER SECURITY CONFERENCE & EXHIBITION is proper,
notwithstanding the Office’s issuance of applicant’s prior
registrations.
An additional argument made by applicant requires
comment. Applicant argues that “computer security” is a
broad term that is not easily defined. Applicant points to
the fact that the examining attorney did not introduce a
dictionary definition of the term or show that the term is
listed in the U.S. Trademark Office Manual of Acceptable
Ser Nos. 78537905 and 78537927
18
Identification of Goods and Services. Although the
examining attorney did not submit a dictionary definition
of “computer security,” we have taken judicial notice of
two dictionary definitions of the term. In any event,
there is no requirement that a term be listed in a
dictionary or in the Office’s Identification of Goods and
Services Manual in order to be found generic. Furthermore,
as the Board stated in In re Analog Devices Inc., 6 USPQ2d
1808, 1810 (TTAB 1988), “while we readily concede that the
category of products which the term analog devices names
encompasses a wide range of products in a variety of
fields, we do not believe this fact enables such a term to
be exclusively appropriated by an entity for products, some
of which fall within that category of goods.” Here, the
term “computer security” refers to a type of conference
featuring information on the protection of a computer and
the information it contains. The fact that the term does
not specify the exact computer security topics or issues
that are discussed at this type of conference does not mean
that applicant is entitled to appropriate the term.
In sum, considering all the evidence in this case and
the fact that the recitation of services in both
applications specifically uses the term “computer security”
generically to name (partially) the subject matter of
Ser Nos. 78537905 and 78537927
19
applicant’s conference, we find that the term COMPUTER
SECURITY is generic for applicant’s identified services.
In view thereof, COMPUTER SECURITY CONFERENCE & EXHIBITION
must be disclaimed before applicant’s mark may be
registered.
Decision: We affirm the refusals to register
applicant’s mark ANNUAL COMPUTER SECURITY CONFERENCE &
EXHBITION in application Serial Nos. 78537905 and 78537927
in the absence of a disclaimer of COMPUTER SECURITY
CONFERENCE & EXHBITION. Applicant is allowed thirty days
from the mailing date of this decision to submit the
required disclaimer, in which case the decision will be set
aside, and the applications will proceed to publication.