Currency Cases LLC

Trademark Trial and Appeal Board

Aug 12, 2016

No. 86391147 (T.T.A.B. Aug. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Currency Cases LLC
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Serial No. 86391147
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Zachary D. Messa of Johnson Pope Bokor Ruppel & Burns LLP,
for Currency Cases LLC.
Donald Johnson, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Seeherman, Mermelstein and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Currency Cases LLC (“Applicant”) seeks registration on the Principal Register of
the mark CURRENCY CASES (in standard characters) for
Storage apparatus that attaches to mobile device with
adhesive in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on three bases: 1) that Applicant’s mark is merely descriptive of its identified goods

1 Application Serial No. 86391147 was filed on September 10, 2014, based upon Applicant’s
allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act.
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under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1); 2) failure to
comply with an information requirement, under Trademark Rule 2.61(b); and 3) the
identification of goods is indefinite.
After the Trademark Examining Attorney made the refusals final, Applicant
appealed to this Board. We affirm the Section 2(e)(1) refusal and the refusal based on
an indefinite identification.
I. Evidentiary Issue
Before proceeding to the merits of the refusals, we address an evidentiary matter.
In connection with the identification of goods requirement, the Examining Attorney
submitted for the first time with his appeal brief a dictionary definition of “mobile”
“as capable of moving or being moved” along with a request that the Board take
judicial notice thereof.2 (6 TTABVUE, 6, 14). Applicant, in its reply, also in connection
with the identification requirement, requests that we take judicial notice of the
dictionary definition of “mobile device” as “a portable, wireless computing device that
is small enough to be used while held in the hand.”3 (7 TTABVUE 3, 5). The
Examining Attorney’s and Applicant’s requests are granted inasmuch as the Board
may take judicial notice of dictionary definitions including online definitions if the
dictionary is readily available and verifiable. Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

2 Merriam-Webster Dictionary.
3 Random House Dictionary.
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So that we may come to a more informed determination on the Examining
Attorney’s refusal to register under Section 2(e)(1), we will first consider the refusals
based upon the sufficiency of the identification of goods and request for additional
information.
II. Identification of Goods
Applicant has identified its goods as “storage apparatus that attaches to mobile
device with adhesive.” The Examining Attorney has rejected this identification as
indefinite because the wording “storage apparatus” and “mobile device” lacks
specificity and identifies goods in more than one class. In particular, the Examining
Attorney submits that the wording “storage apparatus” is misclassified as it could
include electronic storage devices in International Class 9, physical storage devices,
such as money clips, in International Class 16, or wallets that attach to an electronic
device in International Class 18, while the wording “mobile devices” could include not
just mobile phones but mobile radios, portable telephones, computers, hot spot
devices in International Class 9 or hand held units for playing electronic games in
International Class 28. (6 TTABVUE 5-6; December 22, 2014 Office Action p.1).
Applicant argues that it cannot adopt the suggested amendments of the Examining
Attorney because they “inappropriately limit[] the use of Applicant’s goods” and that
its present identification is acceptable because it “falls squarely” within the
acceptable identification in the Trademark ID Manual of “cases adapted for mobile
phones.” (4 TTABVUE 7). Applicant also points to the definition of mobile device
which is defined as “a portable wireless computing device that is small enough to be
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used while held in the hand” as having a “specific, clear, accurate and concise
meaning, rendering Applicant’s description of goods sufficiently definite to be
understood by those attempting to ascertain applicant’s rights should registration
issue for that identification.” (7 TTABVUE 2).
An applicant must identify the goods specifically to provide public notice, to enable
the USPTO to classify the goods and services properly, and to enable the Office to
reach informed judgments concerning likelihood of confusion. The USPTO has
discretion to require the degree of particularity deemed necessary to clearly identify
the goods covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541,
1543-44 (Fed. Cir. 2007); In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91
(CCPA 1980). Terminology that includes items in more than one class is considered
indefinite. In re Omega SA, 83 USPQ2d at 1544.
We agree that without clarification as to the type of storage apparatus, the
identification of goods is indefinite. The terminology in the present recitation of goods,
as pointed out by the Examining Attorney, identifies a variety of goods falling in
different classes. For example, “storage apparatus” could identify a wallet, a case, a
pouch, or some other type of container, and the Applicant was required to identify the
type of container as well as the type of goods the container would carry. As is apparent
from the Examining Attorney’s arguments on appeal and suggestions in the Office
Actions, fitted cases are classified with the product they are designed to carry (cases
adapted for mobile phones), while money clips and wallets (e.g., card wallets, key
wallets) are classified in International Classes 16 and 18 respectively. We disagree
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with Applicant’s argument that its goods fall within the acceptable identification of
“cases adapted for mobile phones.” Those cases are fitted cases for holding a mobile
phone, and it appears that Applicant’s case is not designed to hold the mobile device,
but to be affixed to its exterior.
Accordingly, because the term “storage apparatus” in the identification of goods is
indefinite, we affirm the refusal.
III. Requirement for Additional Information
The Examining Attorney required Applicant to submit the following information
about the goods in the first Office Action:
To permit proper examination of the application, applicant
must submit additional product information about the
goods. … The requested product information should
include fact sheets, instruction manuals, and/or
advertisements. If these materials are unavailable,
applicant should submit similar documentation for goods
of the same type, explaining how its own product will differ.
If the goods feature new technology and no competing
goods are available, applicant must provide a detailed
description of the goods.
The submitted factual information must make clear how
the goods operate, their salient features, and their
prospective customers and channels of trade. Conclusory
statements regarding the goods will not satisfy this
requirement.4

4 The Examining Attorney also required Applicant to explain how its own product differs from
the products shown and/or described in the evidence attached to the Office action. Although
the Examining Attorney mentions this requirement in its brief, this particular requirement
was not renewed when the information requirement was made final, and we therefore do not
consider it herein.
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In its response to the Office Action, Applicant did not specifically address the
requests made in the information requirement.5 We note that it did state in its
response to the mere descriptiveness refusal that
Applicant’s goods are described as a storage apparatus that
attaches to a mobile device with adhesive. The contents of
the storage apparatus is not limited to currency, but also
includes driver licenses, business cards, hotel room key
cards as well as a variety of other non-currency related
items. (June 22, 2015 response to Office Action p. 4).6
Applicant did not address the information requirement in its main brief. In its
reply brief, Applicant asserted that it complied with the requirement by providing a
detailed description of the goods that was not conclusory in nature, and specifically
noting the language quoted above.
Trademark Rule 2.61(b) provides that “[t]he Office may require the applicant to
furnish such information ... as may be reasonably necessary to the proper
examination of the application.” An examining attorney generally has considerable
discretion in deciding whether and what information should be requested pursuant
to Trademark Rule 2.61(b). A request for information must be reasonable. See In re
Planalytics Inc., 70 USPQ2d 1453, 1457 (TTAB 2004) (noting that “there [was] no

5 Applicant apparently misunderstood the request for information, regarding it as a refusal
based on the misclassification of the goods. See June 22, 2015 response, stating that the
initial Office action refused registration because 1) the mark is merely descriptive, 2) the
statement of goods is indefinite, and 3) the goods are misclassified.
6 This statement was made in connection with Applicant’s arguments as to the meaning of
the term “currency” as used in connection with Applicant’s goods and its contention that the
term was not merely descriptive because Applicant’s goods store non-currency items.
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argument that the [information] requirement was not reasonable or legitimate”),
citing In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
We find that the Examining Attorney’s requirement under Trademark Rule
2.61(b) for additional information about the goods was appropriate. As for Applicant’s
response, it certainly would have been more helpful if Applicant had separately
addressed the request for information in both its response to the Office action and in
its appeal brief, or at least had advised the Examining Attorney in its response, and
the Board in its brief, that the information it provided in response to the Section
2(e)(1) refusal was also for the purpose of responding to the requirement for
information. However, we find that the information Applicant provided, although
Applicant could have been more forthcoming, was sufficient, and therefore we reverse
the refusal based on the requirement for information under Trademark Rule 2.61(b).
IV. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
applied to the goods or services of the applicant, is merely descriptive of them. 15
U.S.C. § 1052(e)(1). “A term is merely descriptive if it immediately conveys knowledge
of a quality, feature, function, or characteristic of the goods or services with which it
is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)).
Whether a term is merely descriptive is determined not in the abstract, but “in
relation to the particular goods [or services] for which registration is sought, the
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context in which it is being used, and the possible significance that the term would
have to the average purchaser of the goods [or services] because of the manner of its
use or intended use.” In re Bayer, 82 USPQ2d at 1831. See also In re Chamber of
Commerce, 102 USPQ2d at 1219. When a composite mark combines two or more
descriptive terms, the descriptiveness analysis turns on whether the combination of
terms evokes a new and unique commercial impression. While a combination of
merely descriptive terms may be registrable if the composite creates a unitary mark
with a separate, nondescriptive meaning, In re Colonial Stores, Inc., 394 F.2d 549,
157 USPQ 382 (CCPA 1968), the mere combination of descriptive words does not
necessarily create a nondescriptive word or phrase. If each component retains its
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171,
1173, 71 USPQ2d 1370, 1371-72 (Fed. Cir. 2004).
Both the Examining Attorney and Applicant have submitted dictionary
definitions. (June 22, Response to Office Action p. 8; July 13, 2015 Office Action, p.5).
Although Applicant submitted multiple definitions for the term “currency,” the most
relevant definition is “any form of money in actual use as a medium of exchange.”7 As
to the definition for the term “case,” the Examining Attorney identifies the following
as most relevant: “[a] container; a receptacle: a jewelry case....”8

7 The American Heritage New Dictionary of Cultural Literacy, Third Edition.
8 The American Heritage Dictionary of the English Language.
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The Examining Attorney also provided Internet webpages showing and describing
cases that hold money, or currency, some of which are used in connection with mobile
phones, in order to show that “CURRENCY CASES – means cases for currency or
compartments in which money, checks and the like are stored…” (6 TTABVUE 9,
December 22, 2014 Office Action, pp. 1, 3-5; July 13, 2015 Office Action p.1, 3).

Serial No. 86391147
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Serial No. 86391147
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The Examining Attorney also provided two webpages headed “Currency Cases™,”
from the website currencycases.com. (July 13, 2015 Office Action pp. 2-3). The
Examining Attorney points to the pictures displayed on the webpage and submits
that “currency cases” “are cases or receptacles used to carry money and the other
usual contents of a wallet and that are attached to mobile phones.” (6 TTAVUE 9).
These webpages apparently show what Applicant’s products look like according to the
statement by Applicant in its reply brief (7 TTABVUE 4): “Applicant, however,
concedes that the Examining Attorney’s description of the product at
currencycases.com with the exception that the product is to be attached exclusively
to mobile phones and that the product is limited to the storage of money.”
Serial No. 86391147
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Serial No. 86391147
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The Examining Attorney argues that CURRENCY CASES is merely descriptive
of “cases for currency or compartments in which money, checks and the like are
stored” as evidenced by the dictionary definitions for “currency” and “case,” the
website evidence advertising “currency cases” that attach to mobile phones, and the
website evidence of wallets and other cases, used in connection with mobile phones
or separately, in which money and other usual contents of a wallet are stored. (6
TTABVUE 9).
Although acknowledging that its goods may be used to carry currency, Applicant
contends that its mark is suggestive as it does not convey directly or indirectly “the
vital purpose, characteristic or quality of Applicant’s goods” since its storage
apparatus also can “hold driver licenses, business cards, hotel room key cards” as well
as currency. (4 TTABVUE 4, 5). Applicant further contends that “[t]he presence of
the multiple definitions and connotations for the term ‘currency,’ combined with the
fact that Applicant’s storage apparatus is not limited to storage of currency-like
items, creates a mental pause in the mind of the consumer as to the goods offered
under Applicant’s Mark.” (4 TTABVUE 4, 5).
We agree with the Examining Attorney that CURRENCY CASES is merely
descriptive of Applicant’s “storage apparatus that attaches to mobile device with
adhesive.”
The term “currency” identifies money, which is an item carried or stored in
Applicant’s storage apparatus, as Applicant has acknowledged. Although Applicant
contends that the term “currency” is not merely descriptive in connection with its
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goods because its storage apparatus also holds non-currency items, a term need not
describe each and every specific feature of an applicant’s goods in order to be
considered merely descriptive; it is sufficient if the wording describes a significant
feature or function of the goods. See In re Chamber of Commerce, 102 USPQ2d at
1219. See also In re Oppedahl & Larson, 71 USPQ2d at 1371 (citing In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir.
2001)). (“A mark may be merely descriptive even if it does not describe the ‘full scope
and extent’ of the applicant’s goods or services.”). As to Applicant’s argument
regarding multiple meanings of the term “currency,” the fact that a term may have
other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). As the Examining Attorney has pointed out, Applicant’s
argument disregards the relationship of the mark to the identified goods. Applicant’s
own statements show that one of the items that can be placed in its storage apparatus
is currency (money), and that this term identifies a significant feature of Applicant’s
goods.
As to the term “case,” Applicant’s goods are identified as a storage apparatus, and
Applicant has not disputed the definition provided by the Examining Attorney for the
term “case.” Additionally, Applicant’s statement in its brief that its goods fall within
the definition of cases adapted for mobile phones, and the pictures of other “Currency
Cases” at currencycases.com shows that the goods are considered cases.
Based on the meanings of the individual terms “currency” and “cases,” as they
would be understood in the context of storage apparatus which could be attached to
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mobile devices, we find that the combination CURRENCY CASES is merely
descriptive of Applicant’s goods. The individual merely descriptive terms retain their
descriptive character when combined to form the composite CURRENCY CASES.
CURRENCY CASES, when used in connection with storage apparatus that attaches
to mobile device with adhesive, would immediately convey to consumers that this
apparatus is a case that can hold currency.
Decision: The Section 2(e)(1) descriptiveness refusal and the requirement for an
acceptable identification are affirmed; the Trademark Rule 2.61(b) requirement for
information is reversed.