Winner Int'l. Royalty LLC

Trademark Trial and Appeal Board

Apr 26, 2001

No. 75354735 (T.T.A.B. Apr. 26, 2001)

4/26/01 Paper No. 13
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Winner International Royalty LLC
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Serial No. 75/354,735
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Robert V. Vicars for Winner International Royalty LLC
Won T. Ho, Trademark Examining Attorney, Law Office 104
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Before Hanak, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Winner International Royalty Corporation LLC
(applicant) seeks to register in typed drawing form HARDWARE
SECURITY SERIES for “metal mechanical locks.” The intent-
to-use application was filed on September 10, 1997.
The examining attorney has refused registration
pursuant to Section 2(e)(1) of the Trademark Act on the
basis that applicant’s mark is merely descriptive of metal
mechanical locks.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a hearing.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/354,735
A word or term is merely descriptive if it “immediately
conveys ... knowledge of the ingredients, qualities, or
characteristics of the goods ... with which it is used.” In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
See also In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (“A term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods.”). The mere
descriptiveness of a word or term is not decided in the
abstract, but rather is decided in relationship to the goods
or services for which registration is sought. Abcor
Development, 200 USPQ at 218.
At the outset, we note that the word SERIES in
applicant’s mark has little if any source identifying
significance. Applicant argues at page 5 of its brief that
“the term SERIES is also not merely descriptive of metal
mechanical locks.” However, the issue before us is whether
the mark HARDWARE SECURITY SERIES in its entirety is merely
descriptive of metal mechanical locks. If applicant’s mark
were METAL MECHANICAL LOCK SERIES, then this term in its
entirety would be descriptive of and indeed generic for a
series of metal locks. In short, if it is determined that
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the term HARDWARE SECURITY is merely descriptive of metal
mechanical locks, then this determination is not altered by
the addition of the word SERIES.
Before considering the evidence of record, two legal
principles should be clarified. At page 3 of its brief,
applicant states that “the consumer of metal mechanical
locks would not immediately, nor even quickly take the words
of the subject mark, namely HARDWARE SECURITY SERIES and
relate that to metal mechanical locks. Therefore, subject
mark is not merely descriptive for metal mechanical locks,
and therefore, is registerable on the Principal Register.”
We fully agree with applicant that consumers seeing the term
HARDWARE SECURITY SERIES in a vacuum would not relate this
term to metal mechanical locks. If they did, then the term
HARDWARE SECURITY SERIES would not be simply merely
descriptive of metal mechanical locks, but rather would be a
generic term for metal mechanical locks. By way of analogy,
consumers seeing the word “red” would not relate that word
to one particular type of goods. However, this does not
mean that the word “red” is not descriptive of numerous
goods, including, simply by way of example, roses, lipstick
and paint. As previously noted, the mere descriptiveness of
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Ser. No. 75/354,735
a word or term is not decided in the abstract, but rather is
decided in relationship to the goods or services for which
registration is sought. Abcor Development, 200 USPQ at 218.
Thus, the question to be decided is whether upon seeing the
term HARDWARE SECURITY SERIES in connection with metal
mechanical locks consumers would gain an understanding of
the qualities or characteristics of the locks.
Second, applicant argues at page 4 of its brief that
“based on the definitions of record, the term HARDWARE
relates to so many goods that it is incapable of being
merely descriptive of any one product let alone the goods of
this application.” Applicant’s reasoning is simply
incorrect. As just noted, the word “red” is merely
descriptive of numerous goods, many of which have little in
common. In addition to being merely descriptive of roses,
lipstick and paint, the word “red” is also merely
descriptive of automobiles, barns and a wide array of other
varied goods.
In this regard, reference is made to the case of In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d 871
F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) and cases cited
therein. In the Analog Devices case, it was held that the
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Ser. No. 75/354,735
term ANALOG DEVICES was not only merely descriptive of, but
indeed was generic for, a wide array of very different types
of goods.
We turn now to the evidence of record. The examining
attorney has made of record stories and advertisements
demonstrating that third parties have used the term
“hardware security” to describe locks and other devices
which physically secure computer hardware. One
advertisement is for the KABLIT
Complete Hardware Security
System. This advertisement states that the system secures
valuable computers to desks, tables or other immovable
objects. The system includes a lock, a six foot cable and
two glue-on discs.
Other concerns likewise advertise that they offer
hardware security systems to physically secure computer
hardware to “immovable” objects. One advertisement states
that “if the hardware can be stolen or surreptitiously
replaced, secure software will not help.” We will not dwell
on a lengthy discussion of these various advertisements and
articles because applicant at page 6 of its brief has
conceded that there are indeed “devices designed to protect
the physical structure of a computer.” However, applicant
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Ser. No. 75/354,735
contends that the vast majority of these advertisements and
articles “do not relate to the goods of this application.”
(Applicant’s brief page 6). Even if we assume for the sake
of argument that the term “hardware security” is more
commonly used to describe devices which seek to prevent the
electronic invasion of computer hardware, it must be
remembered, as stated on many previous occasions, that the
mere descriptiveness of a term is not judged in the
abstract, but rather is judged in relation to the goods or
services for which registration is sought. Abcor
Development, 200 USPQ at 218. In this case, the
identification “metal mechanical locks” is broad enough to
encompass all locks of this type, including those used to
secure computer hardware. Thus, when a consumer sees the
purported mark HARDWARE SECURITY SERIES in conjunction with
metal mechanical locks, the consumer will understand that
these locks are designed to physically secure computer
hardware to “immovable” objects. In this regard, reference
is made to an article appearing in the June 21, 1995 edition
of Computing Canada where the term “hardware security lock”
is used in conjunction with a lock designed specifically for
use with computer hardware. Reference is also made to the
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following sentence taken from an article appearing in the
November 1992 edition of Compute!: “In addition to password
protection, the DecisionMate also comes with a hardware
security kit, which consists of a restraining bracket,
cable, and combination lock.” (We recognize that in the past
this Board has accorded either no weight or extremely
limited weight to articles appearing in foreign
publications. However, given the global nature of the
computer industry and the fact that these articles appeared
in English in Canadian publications, we believe that they
are entitled to some weight. In any event, as previously
noted, applicant has already conceded that there exist
“devices designed to protect the physical structure of a
computer.”).
In conclusion, given the fact that third parties have
used the term “hardware security” to describe locks and
other devices to physically secure computer hardware, we
find that upon seeing the purported mark HARDWARE SECURITY
SERIES in connection with metal mechanical locks, consumers
would immediately understand that these are a series of
locks designed to secure computer hardware. Accordingly,
the purported mark is merely descriptive of the goods for
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Ser. No. 75/354,735
which registration is sought.
Decision: The refusal to register is affirmed.
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