ATMEL Germany GmbH

Trademark Trial and Appeal Board

Sep 26, 2008

No. 78726773 (T.T.A.B. Sep. 26, 2008)

Mailed:
September 26, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ATMEL Germany GmbH
________

Serial No. 78726773
_______

Martin R. Geissler and Scott T. Wakeman of Muncy
Geissler Olds & Lowe, PLLC for ATMEL Germany GmbH.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Grendel and Mermelstein, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
ATMEL Germany GmbH seeks registration on the Principal
Register of the mark HFTAG (in standard character format) for
goods identified in the application, as amended, as follows:

“semiconductors; semiconductor chips;
transponders; transponder chips;
communication systems, namely communication
hubs; transponder communication systems,
namely transponder communication hubs; radio
tracking devices, namely radio frequency
identification (RFID) tags and readers for
tracking persons, animals, vehicles, or goods
of any kind; electronic inventory control
devices, namely radio frequency
identification (RFID) tags and readers for
tracking inventory; electronic identification
devices namely radio frequency identification
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78726773
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(RFID) tags and readers; telecommunication
and radio transmitters; telecommunication and
radio receivers; radiotelephony transmitters
and receivers; wireless telephony apparatus;
miniature microwave components, namely
antennas; monolithic integrated circuits;
radios; integrated circuits; blank integrated
circuit cards; computer software for
programming transponders; data compression
software for use in transponders;
transmission software for use in
transponders; decoder software for use in
transponders; downloadable software for use
in transponders; global positioning systems;
software for the operational management of
portable magnetic and electronic cards;
software programmable microprocessors; theft
alarms; vehicle locating, tracking and
security system comprised of an antenna and
radio transmitter to be placed in a vehicle;
encoded micro particulates, tags and taggants
of plastic, metal or silicate for use in the
field of passive labeling, tracing or
tracking of persons, animals, vehicles or
goods of any kind; antennas; apparatus for
transmitting radio programmes and radio relay
messages; devices for wireless radio
transmission; electronic readers/recorders
for medical patient identification bands;
radio frequency identification (RFID) tags;
sensors for the determination of
temperatures, positions and distances; sensor
cards for the determination of temperatures,
positions and distances” in International
Class 9.1
The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).

1 Application Serial No. 78726773 was filed on October 5, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
Serial No. 78726773
- 3 -
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board. Applicant and the
Trademark Examining Attorney have fully briefed the issues
in this appeal. We affirm the refusal to register.
It is the position of the Trademark Examining Attorney
that the term HFTAG aptly describes high frequency (HF)
radio frequency identification (RFID) tags, and that the
wording “HF TAG” is used regularly enough by competitors
in this field that the relevant consumers are likely to
perceive the alleged mark, HFTAG, as indicating a feature,
function, and/or type of the identified goods.
By contrast, in support of registrability, applicant
argues that its mark is, at most, suggestive because
prospective purchasers will not immediately divide the
unitary mark between its second and third letters and then
analyze the two parts separately.
As evidence in support of his position, the Trademark
Examining Attorney submitted: (1) initialism and dictionary
entries showing that “HF” is an often-used abbreviation in
this field for “high frequency,” and that “tag” is the name
given to these transponders; and (2) printouts from various
Internet websites, which show the use of “HF tags” as a term
of art for high frequency RFID transponders or tags.
Serial No. 78726773
- 4 -
The following entries from the Internet were made part
of the record by the Trademark Examining Attorney:
HEADLINE: HF Tags
Escort Memory Systems extensive line of HF RFID Tags is rivaled by none in
the industry. Our tags provide outstanding RFID solutions for demanding supply
chain applications. Featuring over 50 different HF tag models our diversity of
tags are a testament to more than twenty years we’ve been providing RFID
Solutions for a wide variety of industrial applications. Tags can be mounted to
product or product carriers, embedded in pallets walls and flooring and much
more. Sizes range from tags that can fit on the tip of your finger to larger, long
range tags. Our HF tags features include: …2
- o O o -
HEADLINES: UHF vs. HF tags
Item level tagging with RFID has been conducted mainly with HF (13.56 MHz)
tags. There are more than one billion HF tags already in use. Even though UHF
is also being trialed widely, most enterprises such as Metro in Germany, FDA in
the US have favored HF tags with write capacity. In Europe, DHL has invited
bids for 1 billion HF tags for consumption every year.

The Swiss packaging company, Zeiler, which is supplier to Roche, has teamed up
with Siemens to develop HF tags that will be used on ampoules and syringes.
GCC, which is a chain of supermarket stores in the Middle East, is planning to tag
every item in one of its stores by September 2005. The HF tags for the trial,
which is expected to last for six months, will be provided by the Emirates
Technical Innovations Centre ( ETiC).

There are some retailers who prefer to use UHF tags for item-level tagging as
they are already using the higher frequency UHF tags on cases and pallets.
Tesco, for example, has delayed item-level tagging even though it obtained
excellent results with HF tags. The companies wish to duplicate the success with
UHF tags. The tag manufacturing companies such as Tagsys recommend HF tags
for item-level tagging but most companies are currently concentrating on meeting
the pallet-level tagging mandates of major customers such as Wal-Mart.

Even though certain readability and quality issues have to resolved regarding HF
tags, the project by ETiC gives it a unique opportunity to conduct a trial in a
large retail environment and learn about item-level tagging, specifically of food
and other perishable items. GCC will use tagging to manage the supply chain
across its 68 stores. ETiC is aiming to establish a production facility with a
capacity of more than 1,200,000,000 tags/year. The facility will manage the
assembly and attachment of the tags and will be able to provide self diagnostic
strips, smart labels, time and temperature labels, etc.

2 http://info.ems-rfid.com/mainmenu1/products/
hf/tags/index.html

Serial No. 78726773
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In laundries, item-level tagging is done by using HF tags as the wet conditions
preclude the use of UHF tags. Items in libraries are also tagged using HF tags.
Japanese radio regulations do not permit the use of UHF for RFID; therefore
Maruetsu, which is a prominent Japanese chain of stores, uses HF tags for
tagging its food items. UHF finds use in conditions where a longer range is
required and there are no metals in the vicinity, for example, in apparel stores.
Also, UHF is being tested for item-level tagging in the pharmaceutical industry.3
- o O o -
HEADLINE: Blue- Collar RFID
Each frequency offers tradeoffs in terms of performance, tag size and price. The
UHF tags offer faster data transfer rates and longer read ranges than LF and HF
tags. Compared to read ranges measured in inches for LF and HF tags, a UHF
Gen2 tag can be read at distances up to 25 feet….4
- o O o -
HEADLINE: Study Says HF Rules for Pharma Items
In tests performed by ODIN Technologies, HF tags outperformed UHF tags for use on
pharmaceuticals at the item level.
Within RFID item-level tagging applications, specifically within the pharmaceutical
industry, both ultra-high frequency (UHF) and high frequency (HF) tags are
being tested and deployed in the supply chain.5
- o O o -
HEADLINE: RFID Vendors Unite to Promote UHF for Items
If UHF tags can be made to use with magnetic coupling to operate in the near
field, that does beg the question: Can HF tags be made to use electromagnetic
coupling in the far field? The answer, according to Gokhale, is no. That’s
because lower frequencies generate weaker electromagnetic fields than higher
frequencies do. HF tags operate at 13.56 MHz, while UHF operates in the 900
MHz range. “That is a 70-times multiple in frequency between the two — and
why UHF can work with far-field antennas [antennas that have greater read
ranges], and HF can't.”6
- o O o -
HEADLINE: Technical Characteristics of RFID
High-Frequency (HF): By comparison with UHF tags, passive HF tags have the
drawback of low transmission range -- generally on the order of just over a foot.
In general, they are also larger than UHF tags; flat HF tags are typically about
50mm by 100mm in size. HF tags, however, have the advantage of being
readable in the presence of water.

3 http://www.rfidgazette.org/2005/09/index.html

4 http://www.automationworld.com/feature-2520

5 http://www.rfidjournal.com/article/articleview/2226/1/1/

6 http://www.rfidjournal.com/article/articleview/2412/2/1/
Serial No. 78726773
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HF tags operate at 13.56 MHz, a frequency known as the industrial-scientific-
medical (ISM) band. HF tags are popular in some smartcard applications and
also for various industrial uses.7
- o O o -
HEADLINE: what's the frequency?
On one side of the divide are those who back high-frequency (HF) tags; on the
other, supporters of ultra-high-frequency (UHF) technology. Backers of HF tags
claim they offer more accurate read rates than their UHF counterparts and are
less susceptible to interference from metal and water. They also like to point out
that the HF tags' smaller, tighter read ranges cut down on the risk of unwanted
reads from tags on nearby objects.8
- o O o -
HEADING: Data capture basics
Passive vs. active tags
1. High frequency (HF) tags have been used to identify and track assets for
decades. These tags have a limited read range of 2 to 6 inches from the reader.9
- o O o -
HEADING: Frequently Asked Questions (FAQs)
Q: What is the read range for a typical RFID tag?
A: The read range of passive tags (tags without on-board power supplies)
depends on a lot of factors: the system frequency used, the power level of the
reader, and interference from metal objects or other devices which generate radio
frequencies. Generally, low-frequency (LF) tags have read ranges of less than 12
inches. High frequency (HF) tags have a read range of less than three feet, and
UHF tags have read ranges up to about 20 feet. When users require longer range
reads, such as for tracking railway cars in a depot, active tags (using on-board
power) can yield read ranges of 300 feet or more.10
- o O o -
HEADLINE: RFID Primer
TAGS: The recommended standard hardware for library RFID tagging is 13.56
MHz ISO15693. And the recommended data format for new libraries is the “Open
Danish Model.” (See definition below)

These tags are also known as High Frequency (HF) Tags. They have a better
read distance than Low Frequency (LF) tags and are less directional than Ultra
High Frequency (UHF) Tags. This makes them reasonably well suited for library

7 http://www.rsa.com/rsalabs/node.asp?id=2121

8 http://www.dcvelocity.com/articles/?article_id=812

9 http://www.mmh.com/article/CA6458185.html?industryid
=2098&q=HF+tags

10 http://www.rfidfactory.com/faqs.html

Serial No. 78726773
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inventory management and security. The maximum readable distance to the tag
is 10 to 20 inches depending on the size of the tag.11
- o O o -
HEADLINE: Passive Tags
Passive tags are the simplest type. Powered exclusively by RF energy sent from
the reader, they don’t have an integrated battery, so they can be inexpensive,
mechanically robust, and quite small (e.g., about the size of a thumbnail). Passive
tags have a limited reader-to-tag range, however, because the received power
depends on their physical proximity to the RFID reader.

The range of the link is also affected by the RF frequency chosen. Low-frequency
(LF) tags commonly utilize the 125-kHz-to-135-kHz portion of the spectrum; since
their range is constricted, they are mainly used for access control and animal
tagging. High-frequency (HF) tags, mostly operating in the 13.56-MHz band,
allow a range of a couple of feet. They are typically used for simple one-on-one
object reads, such as access control, toll collection, and tracking of portable
items, such as library books.12
- o O o -
HEADLINE: Products

- o O o -
HEADLINE: Cracking the Frequency Code
According to a March 2006 IDC Health Industry Insights Perspective Report, "HF
(high frequency) tags have been used commercially for nearly a decade and
have become the standard choice for item-level tagging because of their near
perfect close-proximity read rates and preferable technical characteristics. HF
tags regularly achieve over 99.9% readability within a 3 ft range and are better

11 http://www.idrecall.com/documentation/RFID%20Primer.pdf

12 http://www.analog.com/library/analogDialogue/archives/40-
09/rfid.html

13 http://www.morerfid.com/details.php?subdetail=Product
&action=details&product_id=5&display=RFID

Name HF TAGS 13.56 MHz
Category Tag
Company UPM Rafsec
Description
The operating distance of a 13.56 MHz tag depends on
the tag size and reader type. It can be close to one
metre. Due to the anti-collision protocol, it is possible
to identify many smart labels simultaneously. The tags
can be inserted under almost any type of self-
adhesive/pressure sensitive label using a simple
process. Labels with metal foils should be avoided
since metal has a diminishing effect on the reading
distance. The added thickness of UPM Rafsec13
Serial No. 78726773
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suited than UHF (ultra high frequency) tags for application to liquid-containing
products."
… In reality, HF tag costs are competitively priced and prices are dropping in
order of magnitude as volumes are increasing…
Are UHF and HF tag form factors comparable? Claims have been made that
UHF tag form factors are shrinking in size to meet pharmaceutical application
needs and can compete with the tiny HF offerings that have already been
implemented in successful pilot studies. To date, an HF tag weighing-in at a
"nano footprint" of 8.9 mm in diameter appears to be the smallest offering on the
market …14
- o O o -
HEADLINE: RFID – HF Tags (13.56 MHz)
We provide range of High Frequency tags mainly used for applications like:
• Systems security
• Cattle Management
• POS Systems
• Access Control
• Personal ID Systems
• Automatic data logging15
- o O o -
HEADLINE: Scanning the future
Types of tags
Passive tags are extensively used in tracking consumer goods. Tags usually
operate in two frequency bands. High-frequency (HF) tags have a range of up to
3 feet, while Ultra High Frequency (UHF) tags read from up to 20 feet. For longer
ranges, active tags use batteries to boost read ranges to 300 feet and more.16

Inasmuch as the entire record shows the focus of
applicant’s identified products to be goods associated with
radio frequency identification (RFID) tags, or transponders,

14 http://www.pharmexeceurope.com/europharmexec/article/
articleDetail.jsp?id=387040

15 http://www.syncroft.com/

16 http://www.channelbusiness.in/index.php?option=
com_content&task=view&id=19&Itemid=83

Serial No. 78726773
- 9 -
the Trademark Examining Attorney argues that for the
relevant members of the public, this designation immediately
conveys the feature, function, and/or type of applicant’s
identified goods. We agree, being persuaded by the Internet
evidence that “HF tag” is a commonly-accepted appellation
for the goods identified by applicant herein.
Applicant, on the other hand, maintains that the
average consumer would not recognize the five-letter-string
HFTAG as a type of radio frequency identification tag:
“The record does not show that a
prospective purchaser would immediately
separate the subject mark between its second
and third letters.”

Applicant’s reply brief at 3 – 4.

A term is merely descriptive if, as used on or in
connection with applicant’s goods, it immediately conveys
information about a significant ingredient, quality,
characteristic or feature of applicant’s goods, or if it
directly conveys information regarding the nature, function,
purpose or use of applicant’s goods or services. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978); and In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992). Of course, the issue of mere descriptiveness cannot
be determined in a vacuum, but rather is analyzed as the
term is used, or as it is intended to be used, on or in
Serial No. 78726773
- 10 -
connection with applicant’s goods or services. In re Abcor
Development Corp., 200 USPQ at 217.
From the various initialism entries placed into this
record, applicant is correct that the letters “HF” have
dozens of possible meanings when viewed in a vacuum. Of
course, any term alleged to be merely descriptive may have
multiple meanings. Under our precedential decisions, it is
in the context of the identified goods that we must make our
determination on mere descriptiveness. In the instant
context, when this alleged mark is used in connection with
RFID tags, it is quite clear that the designation will be
understood as if it were “HF Tag,” the designation “HF” will
immediately be understood and recognizable as an initialism
for “high frequency.”
The Internet articles reflect the classes of actual or
prospective customers of applicant’s particular goods.
Accordingly, we conclude that the relevant members of the
public, purchasers and potential purchasers of applicant’s
goods will run the gamut from pharmaceutical manufacturers,
international package delivery companies, cattle managers,
supermarket executives and other retailers, those
responsible for library inventory management and security,
to vendors of POS systems, personal ID systems, access
control and institutional systems security, to name a few.
Serial No. 78726773
- 11 -
They would readily recognize and attribute this particular
meaning to the term, when used in connection with
applicant’s goods. Under the controlling law on
descriptiveness, that is enough:
Appellant advances a variation of this argument,
arguing that the board failed to determine
descriptiveness of “first tier” by its meaning to
“average” or “ordinary” customers, citing In re
Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382,
385 (CCPA 1968) [descriptiveness determined from
standpoint of “potential purchaser”]. See also In re
Abcor Development Corp., 588 F.2d 811, 814, 200 USPQ
215, 218 (CCPA 1978) [“descriptiveness … is to be
determined from the standpoint of the average
prospective purchaser”]. Appellant asserts that the
“vast majority” of its customers would not be
knowledgeable of the meaning of “first tier” in the
banking industry.

Appellant misunderstands the import of the above
decision. In context, “average” or “ordinary”
consumers simply refers to the class or classes of
actual or prospective customers of the applicant’s
particular goods or services. In this sense, corporate
users of banking services who, appellant admits,
understand the industry meaning of a “first tier” bank
are “average” or “ordinary” customers. That corporate
customers may constitute a smaller number of accounts
than individuals is irrelevant. Descriptiveness is not
determined by its meaning only to the class of regular
customers with the largest head count.

In re Omaha National Corp., 819 F.2d 1117, 2 USQP2d 1859
(Fed. Cir. 1987).
The crux of applicant’s argument seems to be that
prospective purchaser would struggle to separate this
mark between its second and third letters. We disagree.
Serial No. 78726773
- 12 -
The fact that applicant chose to eliminate the space
between the initialism “HF” and the word “TAG” thereby
compressing this into a five-letter string, does not change
the significance of the term, and hence is immaterial to the
result under Section 2(e)(1) of the Lanham Act. We find
that relevant purchasers will readily recognize HFTAG as
“HF TAG” in the context of applicant’s goods, and so we are
not persuaded by applicant’s argument that one necessarily
reaches a different result when taking out the space between
the terms.
Our principal reviewing court specifically stated that
the presence or absence of a space between the words was not
determinative of its status as a “compound word.” See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) [SCREENWIPE generic for pre-moistened antistatic
cloths for cleaning computer and television screens]. See
also In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA
1970) [CUSTOMBLENDED generic for custom blended gasoline];
Cummins Engine Co. v. Continental Motors Corp., 359 F.2d
892, 149 USPQ 559 (CCPA 1966) [TURBODIESEL generic for
internal combustion engines]; In re Tower Tech, Inc., 64
USPQ2d 1314 (TTAB 2002) [SMARTTOWER merely descriptive of
“commercial and industrial cooling towers and accessories
Serial No. 78726773
- 13 -
therefor, sold as a unit”]; Micro Motion Inc. v. Danfoss
A/S, 49 USPQ2d 1628 (TTAB 1998) [MASSFLO is generic for flow
meters for measuring flow of mass of fluid]; and Turtle Wax,
Inc. v. Blue Coral, Inc., 2 USPQ2d 1534 (TTAB 1987)
[WASHWAX generic for product which simultaneously washes
and waxes a vehicle].
Similarly, when these two descriptive terms are
combined into HFTAG as presented in the typed drawing, the
separate meanings of the individual components are not lost.
Nor does the combination create any double entendre or
incongruity that might render the combination registrable as
a mark. Accordingly, we find that when these two components
of the alleged mark are combined into HFTAG, it continues
to be merely descriptive of these goods.
In conclusion, we agree with the Trademark Examining
Attorney that applicant’s designation, taken in its
entirety, merely describes a significant feature, function,
and/or type of applicant’s goods. There is no question
that, in purchasing applicant’s tags, one will want the
benefits associated with high frequency RFID tags. The
asserted mark, as a whole, immediately informs prospective
purchasers and/or purchasers of applicant’s goods of a
commonly accepted name for these goods. In fact, without
Serial No. 78726773
- 14 -
any doubt, we find that applicant’s alleged mark is merely
descriptive under Section 2(e)(1). We find that on the
Abercrombie & Fitch17 spectrum of distinctiveness of marks,
upon adoption by plaintiff, this term was much closer to the
“highly descriptive” end of the continuum than to the
“merely suggestive” side. See In re Abcor Development
Corporation, 200 USPQ at 219 [J. Rich concurring that “the
present name of the [gas monitoring badge] is GASBADGE”].
Decision: The refusal to register the term HFTAG
under Section 2(e)(1) of the Lanham Act is hereby affirmed.

17 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759 (2d Cir. 1976).