VoiceMatch Corporation

Trademark Trial and Appeal Board

Jul 26, 2006

No. 76433641 (T.T.A.B. Jul. 26, 2006)

Mailed:
July 26, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re VoiceMatch Corporation
________

Serial No. 76433641
_______

John Kaufman, CEO of VoiceMatch Corporation.

Jeri Fickes, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Hohein, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

VoiceMatch Corporation (proceeding pro se) has
appealed from the final refusal of the examining attorney
to register VOICEMATCH (in standard character form) on the
Principal Register as a trademark for “[d]evelopment of new
technology for others in the field of biometric voice
templates (also called voiceprints) which is compatible
with prior made voice templates” in International Class 42.1

1 Application Serial No. 76433641, filed July 24, 2002, based on
Section 1(b) of the Trademark Act (intent-to-use).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76433641
2
Registration has been finally 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. Additionally, the examining attorney
has construed applicant's submission of “supplemental
evidence” during the prosecution of applicant's application
as a claim in the alternative of acquired distinctiveness
under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), and maintains that applicant's showing of
acquired distinctiveness is insufficient.
Applicant has appealed the final refusal. Both
applicant and the examining attorney have filed briefs.
Applicant did not request an oral hearing.
Applicant has explained its technology as follows:
VoiceMatch system is an advanced technology that
possesses many unique scientific features to be
able to reconstruct older voice templates [i.e.,
“an individual person’s original recording”] and
have these older templates usable with newer
technologies. A user is able to upgrade its
system (comprising a computer with an external
microphone, a remote server holding speaker
templates, and various interface software to work
with Windows, Linux or other operating systems)
so that different versions of software (such as a
new Windows upgrade or a new VoiceMatch template
recording system) can still work with older
versions produced for the organization. Brief at
p. 4.

It is the Examining Attorney’s position that
applicant’s mark merely describes the ultimate purpose of
Ser No. 76433641
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the services, i.e., “to provide voice matches by means of
template expansion, as well as the particular field of the
new technology development, namely voice match technology.”
Brief at p. 3. The examining attorney relies on the
definitions of “voice” and of “match” made of record with
the Office action of November 2, 2004:
Voice:
1.a. [t]he sound produced by the vocals organs of
a vertebrate;
2. [a] specified quality, condition or pitch of
vocal sound.

Match:
1.a. [t]o be exactly like, correspond exactly.

The examining attorney concludes that a “‘voicematch’ or
‘voice match’ are sounds produced by vocal organs of a
vertebrate that correspond exactly.” Brief at p. 5. We
agree that “voicematch” or “voice match” has the meaning
stated by the examining attorney.
We must now determine whether VOICEMATCH, as defined
above, forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
Ser No. 76433641
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which registration is sought, the context in which it is
being used on or in connection with those goods or
services, 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; that a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The examining attorney has submitted with her
November 12, 2003 Office action printouts from two web
sites using “voice” and “match,” and “voice match,” in the
context of access security using voice recognition:
www.research.ibm.com
The program may also ask the user to answer some
challenging questions to more exactly match the
user’s voice with their pre-recorded voice
samples (during enrollment) stored in a database
for identity verification before the normal
Windows Desktop screen will resume or the user is
allowed to … use an application, a data file or
view a document.

* * *

Since this is [a] security program (much
different than a password type program) a voice
match is what is wanted/needed. Like a
fingerprint reader we are looking for the same
print, not one that just comes close.

www.1stvoice.com
Based on an initial voice command (request to
open the email box), the VIVA [Voice
Identification and Verification Agent] is capable
of identifying the user acoustically. Then it
opens an authentication interview to verify the
identify. Due to a good voice match only one
Ser No. 76433641
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question is asked to successfully verify the
caller.

Additionally, applicant itself has used the terms “voice”
and “match” in discussing biometric voice templates. At
p. 4 of its brief, it states that “[t]here has been a lot
of confusion in marketing a new technology that can match
an individual person’s voice with different words which
were not on that individual person’s original recording
(known as the individual speaker’s template).” Similarly,
at pp. 5-6 of its brief, applicant states:
VOICEMATCH … can be used in everyday concise
conversations, such as, “Did you make a
VOICEMATCH of that suspect with the prior
recorded voice on the phone as well as with the
cell phone? And does it compare with the taped
conversation from last year where we only had 10
seconds available for a template back then?

Applicant uses “voice match” not in a trademark sense, but
to indicate that the suspect’s voice is being matched with
his prior recorded voice. We also note that one of
applicant's customers, in its letter in support of
registration of the mark, makes use of “match” in
discussing a feature of applicant's technology.
Specifically, Girard Pessis of the California Medical
Association states: “when we hear the name VoiceMatch we
immediately associate the fact that your technologies can
Ser No. 76433641
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use the same template, for a more efficient ‘match’ of an
individual’s own unique identify.” (Emphasis in original.)
Applicant argues that “‘[m]ere descriptiveness’ is not
completely true as the technology encompasses several
different fine-tuned formats (the operating platform like
Windows or Linux; the size of a speaker’s template such as
15 seconds or 30 seconds; the ‘channel’ such as a cellular
phone or a computer; and the algorithm or its derivatives
[sic]) ….” Brief at p. 5. Applicant also argues that
VOICEMATCH “can mean many different things to different
people. Superficially, the word may mean a matched voice;
a ‘voice match’. However, we are asking to obtain the mark
to represent highly specific tasks that go far beyond a
‘voice match’.” Brief at p. 7. Applicant's arguments are
not well taken. A term need not immediately convey an idea
of each and every specific feature of the applicant's goods
or services in order to be considered merely descriptive;
rather, it is enough that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
From the foregoing, we find that the mark VOICEMATCH,
which is a combination of the defined terms “voice” and
“match,” immediately and without thought or conjecture,
Ser No. 76433641
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merely describes a feature or characteristic of applicant's
services, i.e., that applicant's development of new
technologies for others in the field of biometric voice
templates entails the matching of voices or determining a
voice match.
Because we have concluded that applicant's mark is
merely descriptive of a feature or characteristic of its
services, we now consider applicant's claim – which we
construe as being made in the alternative - that its mark
has acquired distinctiveness.
Applicant has not specifically asserted that it claims
acquired distinctiveness under Section 2(f), and its
application remains as a Section 1(b) (intent-to-use)
application. However, in its September 8, 2003 response,
applicant stated under the heading “Supplemental Evidence
of Use” that its mark is in use and has been since
September 2002; and submitted a letter from a customer and
a letter from a “bank consultant” that show that
“VOICEMATCH is already recognized in commerce as
representing compatible voice template systems.”
Applicant's submission with its May 7, 2004 response
includes a CD-ROM in a case labeled VOICEMATCH, of which
about 240 have been mailed or handed out; a letter
agreement between applicant and Voicematch Technologies,
Ser No. 76433641
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Ltd. in which Voicematch Technologies, Ltd. agreed to
change its name; and a sample of its marketing literature.
Further, applicant stated that VOICEMATCH has been in use
“continually” since September 2002 at its website
“www.voicematchcc” and has been used on its software (CD
ROMs) since April 14, 2003.
While this appeal involves an intent-to-use
application, an intent-to-use applicant who has used its
mark on related goods or services may nonetheless file a
claim of acquired distinctiveness before filing an amendment
to allege use or statement of use if the applicant can
establish that, as a result of the applicant's use of the
mark on other goods or services, the mark has become
distinctive of the goods or services in the intent-to-use
application, and that this previously created
distinctiveness will transfer to the goods and services in
the intent-to-use application when use in commerce begins.
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807 (Fed. Cir. 2001).
The Board has set forth the requirements for showing
that a mark in an intent-to-use application has acquired
distinctiveness:
The required showing is essentially twofold.
First, applicant must establish, through the
appropriate submission, the acquired
Ser No. 76433641
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distinctiveness of the same mark in connection
with specified other goods and/or services in
connection with which the mark is in use in
commerce. All of the rules and legal
precedent pertaining to such a showing in a
use-based application are equally applicable
in this context…. Second, applicant must
establish, through submission of relevant
evidence rather than mere conjecture, a
sufficient relationship between the goods or
services in connection with which the mark has
acquired distinctiveness and the goods or
services recited in the intent-to-use
application to warrant the conclusion that the
previously created distinctiveness will
transfer to the goods or services in the
application upon use.
In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999). See also
Trademark Manual of Examining Procedure § 1212.09(a) (4th
ed. 2005).
Applicant’s showing of acquired distinctiveness for the
merely descriptive term VOICEMATCH for software or
“compatible voice template systems,” i.e., for goods which
applicant presumably maintains are related to the services
identified in its application, falls short of the quantum of
evidence required for a showing of acquired distinctiveness.
Applicant has only used its mark for a limited time period,
there is no evidence of advertising expenditures, there are
only two letters from the public in support of applicant's
claim, and only one item of advertising - which the
examining attorney characterizes as a marketing sheet and
which is merely a comparison of applicant's technology with
Ser No. 76433641
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that of an entity known as “Nuance.” Further applicant's
statements regarding entities with which it is in “talks to
license” or “informal discussion” are simply too vague or
insufficient in number to establish acquired
distinctiveness. Accordingly, we find that applicant has
not established acquired distinctiveness for the mark when
used in association with the services which are the subject
of applicant's application. See Trademark Rule 2.41(a).
Decision: The refusal to register on the Principal
Register on the basis that applicant's mark is merely
descriptive under Section 2(e)(1) and that applicant has
failed to prove the applied-for mark has acquired
distinctiveness under Section 2(f) of the Trademark Act is
affirmed.