IdenTrust, Inc.

Trademark Trial and Appeal Board

Jun 6, 2013

No. 77936373 (T.T.A.B. Jun. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re IdenTrust, Inc.
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Serial No. 77936373
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Stephen J. Huggins of Dentons US LLP for IdenTrust, Inc.

Angela Micheli, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
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Before Quinn, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
IdenTrust, Inc. (“applicant”) seeks to register on the Supplemental Register
the mark VALIDATION GATEWAY, in standard characters, for the following
services:
Providing encryption of data; computer consultation in
the field of network security and authentication of digital
signatures in an electronic transaction or communication;
design of computer hardware, software, and specifications
used for network security and authentication of digital
signatures and identities in an electronic transaction or
communication; technical support services, namely,
troubleshooting of computer hardware and software
problems via telephone, e-mail and in person in
International Class 42; and
Serial No. 77936373
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Digital certification and security services, namely,
issuance and validation of digital certificates providing
authentication of the source of a digital communication,
authentication of personal, entity or object identification
information and of a digital signature in an electronic
transaction or communication, authentication of personal,
entity or object identification information for physical or
logical access control in International Class 44.1

The examining attorney refused registration under Section 23(c) of the Act on the
ground that applicant’s mark is a generic term incapable of distinguishing
applicant’s services. After the refusal became final, applicant appealed, and its
request for reconsideration was denied. Applicant and the examining attorney filed
briefs. We affirm the refusal to register.
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold. They
are by definition incapable of indicating a particular source of the goods or services.”
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed.
Cir. 2011) (citations omitted). The ultimate test for determining whether a term is
generic is the primary significance of the term to the relevant public. See Section
14(3) of the Act. See also, In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991). The examining attorney bears the burden of
making a “strong” showing, with “clear evidence,” that applicant’s mark is generic.

1 Application Serial No. 77936373, filed February 16, 2010, based on alleged first use
dates of June 30, 2008. Applicant originally sought registration on the Principal Register,
but the examining attorney refused, finding that the mark is merely descriptive of the
identified services under Section 2(e)(1) of the Act. Applicant then amended the application
to seek registration on the Supplemental Register.
Serial No. 77936373
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In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). See In re K-T Zoe Furniture, Inc., 16 F.3d 390, 29 USPQ2d 1787,
1788 (Fed. Cir. 1994). “[D]oubt on the issue of genericness is resolved in favor of the
applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
We must make a two-step inquiry to determine whether VALIDATION
GATEWAY is generic: First, what is the genus (category or class) 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? H. Marvin
Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986).
In this case, applicant argues that the genus of the identified services is “data
encryption and computer technical support, as well as computer consultation,
software/hardware design, and digital certification in the field of network security
and authentication,” while the examining attorney argues that the appropriate
genus is “computer network security and data protection services.” Applicant’s
Appeal Brief at 2; Examining Attorney’s Appeal Brief at 3. There is little
substantive difference between these proposals, either of which would essentially
encompass the other, but we find that applicant’s proposed genus is more specific
and more accurately reflects the “reality” of applicant’s use of the term. See, In re
Reed Elsevier Properties Inc., 77 USPQ2d 1649, 1654 (TTAB 2005), aff’d, 482 F.3d
1376, 82 USPQ2d 1378 (Fed. Cir. 2007); DNI Holdings, 77 USPQ2d at 1437-38; see
also, In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir.
Serial No. 77936373
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2005); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 & n. 3 (TTAB 2001).
Indeed, applicant provides the following description of the services offered in
connection with its alleged mark:
Applicant provides services in the digital identity
industry by receiving a set of identity information (e.g., a
digital identity certificate and a digital signature, which
involves the use of a digital identity certificate) from a
customer of Applicant (including data received via the
internet), analyzing same against a set of internal rules
as well as data from identity issuing authorities, and
generating an answer to convey to its customer regarding
whether the identity information has been authenticated
or not and, at the customer’s option, additional data
regarding the person (e.g., credit history) or identity
information (e.g., validity period of the identity data
according to relevant governing documents). Its services
as described in the applications (sic) are in support of
these steps.

Applicant’s Appeal Brief at 3.
Turning to the second part of the genericness inquiry, applicant argues that
the relevant (purchasing) public is “an IT professional operating in the United
States as a high level employee, officer or executive (or consultant) for [applicant’s]
bank customers.” Id. at 2. The examining attorney argues that the relevant public
“consists of data protection businesses, such as Experian Payments, Aladdin
Knowledge Systems and SafeNet, which maintain secure computer network (sic) by
validating data that reaches the network and providing security gateways to
monitor network traffic. In addition, the relevant public would be computer
security personnel from any institution or business that requires a secure computer
network.” Examining Attorney’s Appeal Brief at 4. Applicant’s proposed definition
Serial No. 77936373
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of the purchasing public is clearly too narrow, because neither applicant’s
identification of services, nor its own narrative description of its services included in
its Appeal Brief is limited solely to “bank customers.” Rather, applicant’s
identification of services includes “network security” and “authentication” services
in connection with not just “electronic transactions” but also electronic
“communications,” and applicant authenticates information “for physical or logical
access control,” without any limitation regarding the customers seeking “access
control.” In other words, applicant “provides services in the digital identity
industry,” without limiting those services to the banking industry. Therefore, we
find that the relevant purchasing public in this case is businesses and information
technology professionals seeking network security, data authentication and/or
identity verification services.
Evidence of this relevant public’s understanding of the term at issue may be
obtained from any competent source, including testimony, surveys, dictionaries,
trade journals, newspapers, and other publications. In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). “[E]vidence of
competitors’ use of particular words as the name of their goods or services is, of
course, persuasive evidence that those words would be perceived by purchasers as a
generic designation for the goods and services.” Continental Airlines, Inc. v. United
Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
Here, the examining attorney relies on dictionary definitions of the involved
mark’s constituent terms. Specifically, “validation” is defined as “to prove to be
Serial No. 77936373
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valid; confirm the validity of; verify,”2 and “gateway” is defined as “Something that
serves as an entrance or a means of access” and “Software or hardware that enables
communication between computer networks that use different communications
protocols ….”3 Office Action May 27, 2010. These definitions are consistent with
how applicant uses the term VALIDATION GATEWAY. In fact, “validate,”
“authenticate” and “certify” are synonyms, and applicant’s identification of services
includes “authentication of digital signatures and identities,” “[d]igital certification”
and “validation of digital certificates providing authentication,” while applicant’s
description of its services in its Appeal Brief indicates that applicant informs its
customers “whether the identity information has been authenticated or not,” and
provides identity information, including for example the “validity period of the
identity data.” Similarly, in the description of applicant’s “validation gateway
service” on applicant’s website, applicant indicates that it provides its customers
with “a mechanism for requesting validations or credentials ….” Id. And
applicant’s identification of services includes providing “physical or logical access
control,” which fits squarely within the definition of “gateway.” In other words,
each of the mark’s constituent words is generic and the words retain their generic
significance when combined.

2 http://www.yourdictionary.com/validate

3 http://www.yourdictionary.com/gateway

Serial No. 77936373
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We recognize that to the extent VALIDATION GATEWAY is considered a
phrase rather than a compound term, the issue is not whether the constituent terms
are generic, but rather whether the compound term VALIDATION GATEWAY as a
whole is generic. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832,
1836 (Fed. Cir. 1999). We have no doubt that it is, and that the combined term or
phrase VALIDATION GATEWAY does not create any meaning other than verifying
identities or other parameters for purposes of determining whether to grant access.
In fact, the examining attorney has introduced evidence that a number of
third parties use VALIDATION GATEWAY in much the same manner as applicant
does. For example:
• Patent No. 6160874, owned by MCI Communications
Corp., claims “a method for billing a customer credit card”
which includes: (a) “receiving by a validation gateway a
validation request message containing transaction data
…;” (c) sending a card request message from said
validation gateway to a financial processor for
authorization;” (d) “receiving by said validation gateway a
card reply message from said financial processor;” and (h)
“sending said billing data record from said validation
gateway to a network information distribution service
database server, including sending by a validation module
of a validation computer program on said validation
gateway a billing data record write request to a non-
blocking application modules …;” Office Action of May 27,
2010;

• the “serial-data.com” website states “If you need to
control access to hp Multifunction Printers (MFPs) and
printers in your organization, install SecureJet Auth-PX.
Users will then use their corporate proximity badge to get
access to the device functions …” and “SecureJet can
perform on-line validation of the user ID against LDAP
and ActiveDirectory, using SecureJet Print-PS as
validation gateway. The user ID (PIN code or badge
Serial No. 77936373
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number) is submitted to one or more LDAP and Active
Directory servers through SecureJet Print-PS, to find the
user record matching the ID;” id; 4

• the “secureidnews.com” website, under the headline
“Gemplus delivers secure SIM-based digital signature
solution for SFRs Wireless PKI Commercial Pilot” refers
to a “signature validation gateway (e-verifier);” id.;

• the “kerpass.com” website, under the heading
“KerPass Registration/Validation gateway” states “The
KRV gateway is the server side counterpart of the
KerPass UST mobile client. It directly serves mobile
clients, for registration, resynchronization and electronic
signatures operations. Third party web applications that
are trusted by the gateway access validation features
using a web service api;” Office Action of January 14,
2011;

• the “spamlion.com” website, under the heading “How
Sender Validation is Different” states “SpamLion’s Sender
Validation Gateway focuses on delivering real email
rather than trying to find and stop spam … By focusing
on real email, the Sender Validation Gateway stops more
than 99.99% of automated spam …;” id.;

• the “roguedata.com” website, under the heading
“Customers Clearance and Logistics Solutions,” states
“Supporting over 128 WCO compliant standards with over

4 While some of the websites which the examining attorney relies upon appear to be
operated by foreign companies, given the highly technical nature of the services at issue
and the sophistication of the relevant purchasers, we find that the use of the term
VALIDATION GATEWAY on the websites cited herein is relevant. See e.g., In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (“Information
originating on foreign websites or in foreign news publications that are accessible to the
United States public may be relevant to discern United States consumer impression of a
proposed mark.”); In re International Business Machines Corp., 81 USPQ2d 1677, 1681 n.7
(TTAB 2006) (“In this case involving computer technology, it is reasonable to consider a
relevant article regarding computer hardware from an Internet web site, in English in
another country.”); In re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“it is reasonable
to assume that professionals in medicine, engineering, computers, telecommunications and
many other fields are likely to utilize all available resources, regardless of country of origin
or medium. Furthermore, the Internet is a resource that is widely available to these same
professionals and to the general public in the United States.”).
Serial No. 77936373
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4,000 international shipping companies worldwide, RDC
provides some of the most advanced routing and
validation gateway services for electronic transactions in
world (sic). This same world-class infrastructure is made
available to all of our clients;” Office Action of August 14,
2011;

• the “eurosmartict.com” website, under the heading
“Tailor-made Security Software,” states “Euro-Smartict
delivers tailor-made security software that can be plugged
in existing (or to be developed systems),” and includes, as
an example “Validation gateway modules;” id.;

• Patent No. 5793771, owned by MCI Communications
Corp., for a “Communication gateway,” in the “Related
Art” section states “The X.25 message is routed across the
X.25 LAN106 to the validation gateway 108. The
validation gateway 108 converts the message from the
X.25 format to NSPP and transports that data, via UDP-
IP, to the Operator Network Center (ONC) 112. The 89
DB 114 is a database used for ICCN validation. The 89 is
representative of the first two digits on the ICCN. The
ONC 112 returns a NSPP response to the validation
gateway 108 via UDP-IP. The validation gateway 108
converts the NSPP response to X.25 and routes the
response to the CCITT P/C 1084 via the X.25 LAN 106
…;” id.;

• Patent No.. 5987118, owned by MCI
Communications Corp., for a “Method and Computer
Program Logic for Providing an Intelligent Network
Operator Console with Enhanced Services,” in the
Abstract, states “The validation gateway provides the
intelligent network with an interface to credit card
validation systems (114), and is used to apply charges to
customer credit cards;” id.;

• the “azhomeandgifts.com” website, under the
heading Electronic Data Interchange Overview, states
“EliteSeries Electronic Data Interchange includes a data
validation gateway and optional use of an EDI job
scheduler to process batches of transactions as required.
EliteSeries interfaces to a wide variety of mapping and
Serial No. 77936373
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translation applications, which convert data to and from a
standard EDI form;” id.;

• the Boston Communications Group Inc. 10-K form
for 12/31/97 includes an agreement which states “AT&T
will purchase Billable Messages. AT&T will provide the
vendor providing the validation gateway service with a
copy of the billable card types. AT&T may revise the
billable card types from time to time and will provide the
validation gateway with a copy of the revised billable file,
either in written form or on electronic media …;” id.;

• a press release from I-many, Inc. available on
“thefreelibrary.com” states “I-many Validata checks
prescription level data streams provided by pharmacy
benefit managers (PBMs) who collect this data under the
specifications of Medicare Part D. The solution acts as a
rebate validation gateway, ensuring that data is accurate,
that no data is duplicated, and that all prescriptions
included are eligible for rebates under the regulation …;”
Denial of Request for Reconsideration Nov. 6, 2012;

• Patent No. 6188761, owned by MCI Communications
Corp. for a “System and method for providing operator
and customer services” states in its Abstract that “The
validation gateway provides the intelligent network with
an interface to credit card validation systems (114) and is
used to apply charges to customer credit cards;” id.; and

• a January 14, 2007 blog post at
“chrisweber.wordpress.com” entitled “How to: Fuzzing
Web Services on IIS 6.0 and ASP.NET” states “In the
second fuzzing sweep we’ll present the value in the correct
format, with just a portion of that value replaced with a
malformed value. This phrase should find issues that
would pass a validation gateway, but still cause problems
when the data is consumed.” Id.

This evidence establishes that a number of third parties use the term or
phrase “validation gateway” to refer to software and/or hardware which validates,
inter alia, credit card and other transaction data, user identifications and
Serial No. 77936373
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signatures, and which enables or controls access to, or communicates or interacts
with or utilizes computer networks in connection with financial transactions, mobile
communications and other processes. This evidence, as well as the dictionary
definitions and other evidence of record makes clear that relevant purchasers would
perceive “validation gateway” as generic for applicant’s services. See e.g., In re Wm.
B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010); In re Cell Therapeutics Inc., 67
USPQ2d 1795 (TTAB 2003); Continental Airlines, 53 USPQ2d at 1385.
Applicant’s arguments and evidence are unpersuasive. Applicant’s Chief
Architect and Vice President of Product, Vishvas Patel, testifies that “’validation
gateway’ is not used to describe goods or services in the digital identity industry,”
Patel Declaration ¶ 4, but this testimony is belied by much of the evidence of record,
which makes clear that others in that industry, as defined by applicant’s
identification of services and the quoted section of applicant’s Appeal Brief, use
“validation gateway” generically.
Applicant’s reliance on the fact that certain marks including but not
disclaiming the word GATEWAY registered for services “analogous” to applicant’s is
misplaced. “The Board must decide each case on its own merits” and “the PTO’s
allowance of such prior registrations does not bind the Board or this court.” In re
Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also,
In re Boulevard Entertainment Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed.
Cir. 2003).
Serial No. 77936373
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Finally, applicant’s reliance on In re Seats, Inc., 757 F.2d 274, 225 USPQ 364
(Fed. Cir. 1985) is also misplaced. In that case, the applicant sought to register
SEATS for ticket reservation services, and the Federal Circuit held that while
“seats” may be generic for chairs or couches or bleachers, it is not generic for
reservation services, and the applicant was not “selling seats.” In this case, the
evidence is that applicant is selling “validation gateway” services as that term is
understood by the purchasing public, but even if this were not the case, this case is
distinguishable from Seats. In Seats, there was no indication that the record
contained evidence that SEATS was used for ticket reservation services. Here, by
sharp contrast, the record includes “demonstrated use of [VALIDATION
GATEWAY] by others” for applicant’s services. Reed Elsevier Properties, 77
USPQ2d at 1657.
In short, there is no doubt based on a review of all evidence of record that
VALIDATION GATEWAY is understood by the relevant public to refer to data
encryption and computer technical support, as well as computer consultation,
software/hardware design, and digital certification in the field of network security
and authentication. Moreover, as shown by the evidence, others have a competitive
need to use the term. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir. 1999). Therefore, VALIDATION GATEWAY is generic and incapable of
functioning as a mark.
Decision: The refusal to register is affirmed.