Universal Secure Registry LLC

Trademark Trial and Appeal Board

Jun 22, 2018

No. 87113726 (T.T.A.B. Jun. 22, 2018)

Mailed: June 22, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Universal Secure Registry LLC
_____

Serial No. 87113726
_____

Nathan Harris of Lando & Anastasi LLP,
for Universal Secure Registry LLC.
Katrina J. Goodwin, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Bergsman, Shaw and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Universal Secure Registry LLC (“Applicant”) seeks registration on the Principal
Register of the mark USR ID (in standard characters; ID disclaimed) for the following
goods and services:1
downloadable software for the purpose of authenticating personal
identity and granting access to financial transactions, computers,
computer networks and resources, and physical premises live, in
International Class 9;

1 Application Serial No. 87113726, filed on July 22, 2016, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b), as to all identified classes.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87113726
-2-
computer security services, namely, enforcing, restricting, and
controlling access privileges of users of computing resources based on
assigned credentials, in International Class 42; and

providing user authentication in e-commerce transactions;
Identification verification services in the nature of providing mobile
identity user authentication for restricting and controlling access
privileges of users of computing resources and physical resources, in
International Class 45.

The Trademark Examining Attorney refused registration of Applicant’s mark
under 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 the goods and services identified in its
application.
When the refusal was made final, Applicant appealed. The appeal is fully briefed.
We affirm the refusal to register.2
Mere Descriptiveness – Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A
term is “merely descriptive” within the meaning of Section 2(e)(1) 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 AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise

2 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for Application Serial No. 87113726. All citations to
the TSDR database are to the downloadable PDF version of the documents.
Serial No. 87113726
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mature thought or follow a multi-stage reasoning process in order to determine what
product or service characteristics the term indicates, the term is suggestive rather
than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB
1978); see also, In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal
Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
A term need only describe a single feature or attribute of the goods or services to
be descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001). Moreover, a mark need not be merely descriptive of all
recited goods or services in an application. A descriptiveness refusal is proper, “if the
mark is descriptive of any of the goods [or services] for which registration is sought.”
In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Descriptiveness of a term must be evaluated not in the abstract but “in relation to
the particular goods [or services] for which registration is sought, the 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 Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer
AG, 82 USPQ2d at 1831). “The question is not whether someone presented with only
the mark could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods and services are will understand the mark to
convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower
Serial No. 87113726
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Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
The Examining Attorney argues that Applicant’s USR ID mark is a novel spelling
and the phonetic equivalent of the phrase “user ID.”3 Furthermore, the Examining
Attorney contends that consumers would pronounce “USR” as “user” given the
common pronunciation of a leading “U” as the [ju] diphthong or “yoo” in such words
as “ubiquitous”, “U-bolt” and “U-turn” and the pronunciation of “SR” as “sir” or “ser”.
As such, the Examining Attorney maintains that Applicant’s mark is merely
descriptive of a feature or characteristic of Applicant’s software, security services,
authentication services, and identification services that authenticate and assign
credentials.4
In support of her Section 2(e)(1) refusal, the Examining Attorney submitted
definitions of the components of Applicant’s mark as follows:
USR is an abbreviation for “user” (see www.allacronyms.com).5 ID is an
abbreviation for “identification” or “identity” (see en.oxfordictionaries.com).6 The
Examining Attorney also submitted the dictionary definition of “user ID’ which is
defined as “a unique identification code which allows a computer to recognize a user.”7
Additionally, the Examining Attorney submitted the following evidence
demonstrating that the phrase “user ID” is commonly used in connection with goods

3 Examining Attorney’s Appeal Brief, p. 2, 6 TTABVUE 2.
4 Id.
5 August 15, 2017 Office Action, TSDR p. 12.
6 Id., TSDR p. 13.
7 Id., TSDR p. 24.
Serial No. 87113726
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and services that authenticate and assign credentials. For example:
1. From the website www.techopedia.com: A “User ID is one of the most
common authentication mechanisms used within computing
systems, networks, applications and over the Internet. ... Typically,
in an authentication process, user ID is used in conjunction with a
password.”8

2. From the website http://hitachi-id.com: “A User ID is the code used
by a User to identify himself when he logs into a system and starts a
Login session. It is used by the system to uniquely identify the User.
A User ID is one-half of a set of credentials.”9

3. From the website https://uhhelpdesk.custhelp.com: A “user ID” is
defined as “an identification used by a person to access a computer
system or network.”10

4. From www.dictionary.com: A “user ID” also called a username is
defined as “a unique sequence of characters used to identify a user
and allow access to a computer system, computer network, or online
account.”11

5. From http://folddoc.org: A “user id” is defined as “a number or name
which is unique to a particular user of a computer.”12

6. From www.csgnetwork.com: A “user ID” is defined as the “name by
which you are identified by a particular network.”13

7. From the Academic Press Dictionary of Science and Technology
(www.credoreferenc.com): A “user id” is also known as a user
identification as “a string of characters that uniquely identifies a
user in a computer system.”14

8 February 10, 2017 Office Action, TSDR p. 4.
9 Id., TSDR p. 5.
10 August 15, 2017 Office Action, TSDR p. 11.
11 Id., TSDR p. 12.
12 Id., TSDR p. 14.
13 Id., TSDR p. 15.
14 Id., TSDR p. 23.
Serial No. 87113726
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In traversing the refusal, Applicant argues that (1) the omission of letter “E” in
Applicant’s mark renders the mark unpronounceable;15 (2) Applicant’s USR ID mark
is not found in the dictionary;16 (3) Applicant’s mark is a proprietary acronym of
Applicant’s name, i.e., Universal Secure Registry LLC, and that the evidence
submitted by the Examining Attorney’s demonstrates that USR is also an acronym
of Applicant’s business name;17 (4) Applicant’s mark is not merely descriptive of its
identified services since such goods and services rely on a three factor authentication
– a PIN/password, a token and a biometric – none of which constitutes a user ID;18
and (5) even if consumers perceive USR ID as descriptive, the mark would
nonetheless be registrable as a double entendre.19
We find Applicant’s arguments unpersuasive. With regard to pronunciation of the
term USR, we initially note that it is well established that there is no correct
pronunciation of a mark because it is impossible to predict how the public will
pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105
USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367,
101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352,
1353, 162 USPQ 227, 227 (CCPA 1969)); see also Trademark Manual of Examination
Procedure (“TMEP”) § 1207.01(b)(iv) (Oct. 2017). Notwithstanding, when viewing

15 Applicant’s Appeal Brief, p. 1, 4 TTABVUE 4.
16 Id. at p. 5, 4 TTABVUE 8.
17 Applicant’s Appeal Brief pp. 5-6, 4 TTABVUE 8; Applicant’s Reply Brief, pp. 1-2, 7
TTABVUE 2-3.
18 Applicant’s Appeal Brief p. 6, 4 TTABVUE 9.
19 Id. at p. 7; 4 TTABVUE 10.
Serial No. 87113726
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Applicant’s USR ID mark, as a whole, in relation to the identified goods and services,
consumers are likely to likely to perceive the USR portion as of mark as a novel
misspelling and phonetic equivalent of the word “user” and pronounce it as such. A
novel spelling or an intentional misspelling that is the phonetic equivalent of a merely
descriptive word or term is also merely descriptive if purchasers would perceive the
different spelling as the equivalent of the descriptive word or term. See In re Quik-
Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (CCPA
1980) (holding “QUIK-PRINT,” a phonetic spelling of “quick-print,” merely
descriptive of printing and photocopying services); In re Calphalon Corp., 122
USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN,” a phonetic spelling of
“sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re
Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” a
phonetic spelling of “urban” and “housing,” merely descriptive of real estate services);
see also TMEP § 1209.03(j).
Moreover, Applicant’s argument that the term USR is not found in a dictionary is
contradicted by the evidence of record. As noted above, the Examining Attorney
submitted a definition of the term USR from an acronym dictionary which defines the
designation USR as “user.”20 Further, while Applicant incorrectly argues that no such
word as USR exists in the dictionary, the presence of a term in the dictionary is not
a condition precedent for a finding that a term is merely descriptive. In re Gen’l
Permanent Wave Corp., 118 F.2d 1020, 49 USPQ 184, 186 (CCPA 1941) (“Because

20 See n. 5, supra.
Serial No. 87113726
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appellant has combined two common English words, which in combination are not
found in the dictionaries, is wholly immaterial.”) (citation omitted); In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive, no
dictionary definition of term as a whole); In re Orleans Wines, Ltd., 196 USPQ 516,
517 (TTAB 1977) .
Applicant also argues that since the acronym dictionary definition of the term
USR also defines the designation as Applicant’s business name the term cannot be
descriptive of its goods and services. This argument is unavailing. While the
designation USR may have other meanings in different contexts, including
Applicant’s business name, that is irrelevant in our analysis since our descriptiveness
inquiry is not conducted in the abstract but focuses on the description of goods and
services in Applicant’s application, see Magic Wand v. RDB Inc. 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991), and how consumers would perceive the mark in
connection with those goods and services. See, e.g., Remington-Prods. Inv. V. North
Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (assessing
descriptiveness and genericness by looking at how a consumer would perceive the
mark “in connection with the products”). Here, consumers viewing Applicant’s entire
mark, i.e., USR ID, with the knowledge of Applicant’s goods and services are more
likely to perceive the designation USR as “user.”
Applicant’s argument that its mark is not merely descriptive of its identified
services since such goods and services rely on a three factor authentication – a
PIN/password, a token and a biometric – none of which constitutes a user ID is also
Serial No. 87113726
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without merit. The Examining Attorney submitted evidence demonstrating that
biometric data is a “user ID” because it is a unique identifier of the user and allows a
user to access restricted resources. For example:
1. Articles retrieved from Nexis/Lexis about entities that offer
biometric-based verifications instead of PIN or password-based user
identification to restrict access to resources;21

2. Article from the website www.touchngoid.com concerning entities
that provide fingerprint verification and fingerprint identification
software that authenticates and verifies a person’s identity in order
to allow them to access funds or premises;22

3. A screenshot from the website www.bioid.com, a cloud biometrics
company, discussing its biometric identification and authentication
products and services.23

4. A screenshot from the website www.supremainc.com consisting of a
press release from the company Suprema announcing that it will
offer a product or services that performs “biometric and multi-factor
authentication…and user ID management.”24

Moreover, while Applicant’s mark may only describe a feature or portion of
Applicant’s “three factor authentication,” namely, biometrics, this does not render the
mark distinctive. “A mark may be merely descriptive even if does not describe the
‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson
LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-
A-Mattress Operating Corp., 57 USPQ2d at 1812); see TMEP § 1209.01(b). It is enough
if a mark describes only one significant function, attribute, or property. In re The

21 August 15, 2017 Office Action, TSDR pp. 18-22.
22 Id., TSDR pp. 29-32.
23 Id., TSDR pp. 7-10.
24 Id., TSDR pp. 33-35.
Serial No. 87113726
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Chamber of Commerce of the U.S, 102 USPQ2d at 219; see also Oppedahl & Larson
LLP, 71 USPQ2d at 1371; TMEP § 1209.01(b).
Finally, with regard to Applicant’s double entendre argument, we note that the
multiple meanings that make an expression a “double entendre” must be well-
recognized by the public and readily apparent from the mark itself. See In re
Calphalon Corp., 122 USPQ2d at 1163-64 (quoting TMEP § 1213.05(c)) (finding
SHARPIN not a double entendre in relation to cutlery knife blocks with built-in
sharpeners and affirming descriptiveness refusal); In re Brown-Forman Corp., 81
USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a double entendre in
relation to wines and affirming disclaimer of ROUGE); In re The Place, Inc., 76
USPQ2d 1467, 1470-71 (TTAB 2005) (finding THE GREATEST BAR not a double
entendre in relation to restaurant and bar services and affirming descriptiveness
refusal). In this case, there is no evidence that the designation USR ID is well-
recognized by the public as a “double entendre” and it is not readily apparent from
the mark itself when viewed in connection with Applicant’s identified goods and
services.
In light of the above, we find that Applicant’s mark USR ID, when viewed in
relation to Applicant’s identified goods and services, immediately describes a feature
or characteristic of Applicant’s software, security services, authentication services,
and identification verification services in that the purpose of Applicant’s goods and
services is to provide a mechanism in which to authenticate personal identity and
controlling access to computing resources, otherwise known as a “user ID.”
Serial No. 87113726
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Decision: The refusal to register Applicant’s USR ID mark under Section 2(e)(1)
of the Trademark Act on the ground that the designation is merely descriptive of the
identified goods and services is affirmed.