John M. Floyd & Associates, Inc.

Trademark Trial and Appeal Board

Jul 24, 2006

No. 78245750 (T.T.A.B. Jul. 24, 2006)

Mailed:
July 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John M. Floyd & Associates, Inc.
________

Serial No.78245750
_______

Marcee G. Lundeen and Daniel N. Lundeen of Lundeen &
Dickinson, LLP for John M. Floyd & Associates, Inc.

Toni Y. Hickey, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

John M. Floyd & Associates, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register PRIVILEGE MANAGER CRM as a trademark for “computer
software for use in providing management reports, custom
reports and account holder communications for financial
institutions in connection with their overdraft privilege
programs and the supervision of overdrawn accounts and the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78245750
2
customer relations.”1 Applicant has disclaimed exclusive
rights to use CRM apart from the mark as shown.2
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive of its
identified services.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
Applicant has explained the nature of its software:
…appellant’s software product and
consulting services are marketed to
banks and other financial institutions
for monitoring overdrawn accounts to
which the bank has granted overdraft
benefits. With overdraft benefits,
instead of returning a customer’s check
or other “non-sufficient funds” (NSF)
item, the bank pays it and charges the
customer a fee for the overdraft.
Banks typically have overdraft benefit
software which determines whether to
pay the overdrawn item or to return it
NSF, according to the bank’s
guidelines. Appellant’s PRIVILEGE
MANAGER CRM software is designed to
work with a bank’s existing overdraft
benefit program software. PRIVILEGE
MANAGER CRM can generate or schedule

1 Application Serial No. 78245750, filed May 5, 2003, based on
Section 1(b) of the Trademark Act (intent-to-use). Applicant
subsequently submitted an Amendment to Allege Use, asserting
first use and first use in commerce on May 1, 2004.

2 The Examining Attorney made of record a definition from
Webopedia for CRM: “Short for customer relationship management.
CRM entails all aspects of interaction a company has with its
customer, whether it be sales or service related….”
www.pcwebopaedia.com.
Ser No. 78245750
3
telephone calls, emails, letters or
other communications to the overdrawn
account holder informing them of the
overdraft until the overdraft is
covered by a deposit, keep a historical
record of the account status and
communications, if necessary, close the
account and turn it over for
collections, and provide reports to
bank personnel about the status of the
accounts and the overdraft program as a
whole.”

It is the Examining Attorney’s position that
applicant’s mark is merely descriptive of the identified
goods. Through most of the examination of the application,
the Examining Attorney pointed to examples of third-party
uses of the term “privilege manager” and asserted that
“applicant’s software program functions in a manner
consistent with other PRIVILEGE MANAGER programs, namely,
it monitors and administers NSF account privileges.”
Office action mailed January 25, 2005. The evidence
regarding third-party uses, however, indicates that
“privilege” relates to allowing or controlling access to
networks. See, for example, the following:
PASSGO
UNIX Privilege Manager-UPM
Key Features:
▪Controls access to account privileges
with the first out-of-the box solution
▪Allows delegation of any UNIX user’s
authority, so that you can implement
reasonable security controls, without
impacting the ability of users to
perform their daily work
Ser No. 78245750
4
▪UNIX-Privilege Manager allows you to
control access for any user on your
UNIX network
www.passgo.com

Privilege Manager is used to Grant or
Revoke privileges on an Object (like
Admin, Nodes) for a User/Group.
www.elegant-software.com

Securing JAVA
How to Sign Java Code
*
The Capabilities library provides a
class called the Privilege Manager that
handles requests from the program to
turn on and off privileges. When the
first request to enable a certain
privilege is made, the Privilege
Manager prompts the browser’s user,
showing the certificate used to sign
the code requesting the privilege, and
asking whether the privilege should be
granted. See Figure C.1. If the user
agrees to grant the privilege the
privilege is granted for the lifetime
of the applet.
www.securingjava.com

We agree with applicant that these references to
“privilege manager” have no applicability to applicant’s
identified software or, more specifically, that the
relevant class of consumers will not regard the word
“privilege,” used in connection with such software, as
referring to database access. Rather, they will view
“privilege” as referring to the overdraft privilege
programs with which the software is used. The question of
whether a term is descriptive is determined in relation to
Ser No. 78245750
5
the goods or services for which registration is sought, the
context in which the mark is used, and the significance
that the mark is likely to have, because of the manner in
which it is used, to the average purchaser as he encounters
the goods or services in the marketplace. See In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
Although in her brief the Examining Attorney still
maintains that the third-party evidence is probative,
claiming that “the differing fields of use only
substantiate the fact that ‘privilege manager’ software
programs operate and function in a consistent manner
despite the field of use,” she primarily relies on
dictionary definitions for “privilege” and “manager” to
demonstrate that PRIVILEGE MANAGER CRM is merely
descriptive.3 “Together, the terms, ‘privilege manager’
describe the function of Applicant’s goods, namely,
software that controls or manages information related to
the special advantages or privileges provided by Applicant
for the benefit of the customer.” Brief, p. 4.
Applicant’s identification of goods shows that its
software is used to provide management reports in

3 As noted above, applicant submitted a disclaimer of CRM in
response to the descriptiveness refusal, thus acknowledging the
descriptiveness of this term.

Ser No. 78245750
6
connection with overdraft privilege programs. While the
words PRIVILEGE MANAGER thus have some relationship to
applicant’s software, we find that the term does not
directly impart information about the goods with the
requisite degree of specificity. A mark is merely
descriptive if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods or
services with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). In this case,
however, the words PRIVILEGE MANAGER are inadequate to
convey such knowledge of the goods; more words are needed
for a consumer to ascertain what the software is designed
to do. Because imagination, thought, or perception is
required to reach a conclusion on the nature of the goods,
the mark PRIVILEGE MANAGER CRM is suggestive and therefore
registrable.
Finally, to the extent that there is any doubt on the
question of whether applicant’s mark is merely descriptive,
it is well established that such doubt must be resolved in
applicant’s favor. In re The Gracious Lady Service, Inc.,
175 USPQ380 (TTAB 1972).
Decision: The refusal of registration is reversed.