Aurionpro Solutions Inc.

Trademark Trial and Appeal Board

Jun 20, 2019

87370891 (T.T.A.B. Jun. 20, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: June 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Aurionpro Solutions Inc.
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Serial No. 87370891
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Jason E. Garcia of Reed Smith LLP,
for Aurionpro Solutions Inc.
Sara Anne Helmers, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.
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Before Ritchie, Shaw and Dunn,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Aurionpro Solutions Inc. (“Applicant”) seeks registration on the Principal Register
of the mark for:
Wireless digital apparatus to secure and protect data and
images on all forms of wireless equipment including mobile
telecommunications equipment using an automatic
synchronization process and alarm notification of the loss
or theft of the wireless equipment including mobile
telecommunications equipment, in International Class 9;
and
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Computer security services in the nature of providing
authentication, issuance, validation and revocation of
digital certificates; Electronic monitoring of personally
identifying information to detect identity theft via the
internet; computer security consultancy; computer security
services, namely, monitoring of computer systems for
unauthorized access or data breach, in International Class
42.1
The description of the mark reads: “The mark consists of the term CYBERINC with
three broken semi-circle lines to the left of the C, with the terms AN AURIOPRO [sic]
COMPANY under the ‘BERINC’ portion of CYBERINC.” Applicant has disclaimed
the term COMPANY.
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 6(a), 15 U.S.C. § 1056(a), based on Applicant’s failure to comply
with a requirement to disclaim CYBERINC because it is merely descriptive of
Applicant’s goods and services within the meaning of Trademark Act Section 2(e)(1)
and thus an unregistrable component of the mark. 15 U.S.C. § 1052(e)(1).2
When the refusal was made final, Applicant appealed and requested
reconsideration. The request for reconsideration was denied and the appeal resumed.
The case is fully briefed. We reverse the requirement for a disclaimer.
Section 6(a) of the Trademark Act provides that “The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”

1 Application Serial No. 87370891, filed on March 14, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s allegation of first use of the mark
anywhere and in commerce on August 15, 2016.
2 The application was reassigned to the above Examining Attorney after Applicant filed its
main brief.
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15 U.S.C. § 1056(a). See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB
2013) (citing In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA
1979)). If the Applicant does not comply with the disclaimer requirement, the
Examining Attorney may refuse registration of the entire mark. In re La. Fish Fry
Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262 (Fed. Cir. 2015).
Merely descriptive terms are subject to disclaimer if the mark in which they
appear is otherwise registrable. See, e.g., In re Omaha Nat’l Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart, Inc., 104 USPQ2d 1931, 1934 (TTAB
2012). A term is considered to be merely descriptive under Section 2(e)(1) of the
Trademark Act if it immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used. See In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016). Moreover,
in order to be descriptive, the term must immediately convey information as to the
qualities, features or characteristics of the goods or services with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978) (“‘THE
MONEY SERVICE’ does not directly or indirectly convey any vital purposes,
characteristics or qualities of applicant’s services.”); In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972) (“[T]he term ‘THE LONG ONE’ does not with any degree of
particularity describe the nature of applicant’s bread even as to length”).
The gravamen of the Examining Attorney’s argument is that “the mark
immediately conveys the information that applicant’s good and services are related
Serial No. 87370891
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to computers”3 Moreover, “[t]he term ‘INC’ has no trademark significance, and merely
combining it with the descriptive word ‘CYBER’ does not provide it with any.”4 “In
support of the refusal, the Examining Attorney has submitted, among other things,
the following evidence: 1) a dictionary definition of CYBER; 2) an excerpt from
webopedia.com discussing the prefix CYBER- and providing a list of CYBER-
formative words; 3) an explanation from a website, smallbusiness.chron.com,
explaining the difference between types of corporate entities; 4) internet news stories
and web page excerpts about cyber security; 5) one third-party registration in which
the wording “CYBER INC.” has been disclaimed; and 6) excerpts from Applicant’s
webpage and twitter feed showing Applicant’s use of the term CYBER in connection
with its goods and services.
“Cyber” is defined as an adjective meaning “of, relating to, or involving computers
or computer networks (such as the internet)” or, generally, as a prefix meaning
“computer” or “relating to computers or computer networks.”5 “Inc.” is an
abbreviation for the entity designation “incorporated.”6
The webopedia.com excerpt explains that CYBER is a “prefix used in a growing
number of terms to describe new things that are being made possible by the spread

3 Examining Attorney’s Br., p. 5, 10 TTABVUE 5.
4 Id. at 18.
5 Merriam-Webster.com, Office Action of June 14, 2017, pp. 12-16.
6 Smallbusiness.chron.com, Office Action of June 14, 2017, p. 25.
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of computers.”7 Webopedia.com lists some examples of CYBER-formative terms,
albeit without definitions, including:8
• cyberbully
• cyberjockey
• cyberlibel
• cyberloafing
• cybermediary
• cybernetics
• cyberprise
• cyberpunk
• cyberslacking
• cyberspace
• cybersquatting
• cyberveillance
• cyberpublisher
• cyberzine
• cyberculture
• cyberjournalist
• cyberzine
Notably, “cyberinc” is not listed among the Webopedia.com CYBER-formative terms.
The single third-party registration made of record by the Examining Attorney is
Reg. No. 5287100 for the mark for, inter alia,
computer consultation in the field of computer security. CYBER, INC. and
COMPANY have been disclaimed.
The internet news stories and web page excerpts establish that third parties use
CYBER and CYBER-formative terms in connection with computer-related goods and
services. The following examples are representative:

7 Webopedia.com, Office Action of June 14, 2017, p. 22.
8 Id. at pp. 22-23.
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• An MIT Technology Review article, Six Cyber Threats to Really Worry
About in 2018, discussing “cyberdefenses,” “cyberattacks,” and “cyber-
physical attacks”;
• A Hewlett Foundation article, Cyber, discussing a “Cyber Initiative”
concerning “cyber challenges,” “cybersecurity,” and “cyber policy”;
• The www.ready.gov/cybersecurity website which discusses “cybersecurity”
and “cyber risks”;
• The website of a conference, Cyber Security Chicago, offering advice and
information on preventing “cyber-attacks”;
• The website of the Global Cyber Alliance discussing “Systemic Cyber Risk,”
“cyber attackers,” “cyber professionals,” and “systemic cyber issues”;
• The website of the Cyber Threat Alliance discussing “cybersecurity,” “cyber
threat information sharing,” the “cybersecurity field,” and the “cyber
ecosystem”;
• A Reuters webpage, Cyber Risk, focusing on issues involving “Cyber crime,”
“cyber terror,” and “cyber war”;
• The webpage of cyberdegrees.com which provides information on “cyber
security degrees” and “cyber security jobs”; and
• The Battelle website discussing “cyber challenges,” the “cyber landscape,”
“cyber operations,” “cyberspace dominance,” the “cyber battlefield,” “cyber
forensics,” “cyber operational knowledge and capabilities,” “cyber
intelligence,” and cyber entities or activities”.
Applicant’s website excerpts made of record by the Examining Attorney confirm
that Applicant’s goods and service involve cybersecurity.9
Applicant argues that “the term CYBERINC is a unitary term that has no
recognized industry meaning or definition and is therefore not descriptive of the
applied-for goods and services.”10 In particular, Applicant argues that “the term

9 See Office Action of January 9, 2018, pp. 59-61.
10 Applicant’s Br., p. 15, 7 TTABVUE 16.
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‘cyber’ by itself is amorphous and has a broad span of potential meanings relating to
the culture of computers and the internet.”11 In support of registration, Applicant
submitted examples of third-party registrations with arguably similar structure and
registered on the principal register without disclaimers. The following examples are
most relevant:
• SMILE INC. (Reg. No.: 5360992) for electronic game software for use on
mobile and cellular phones;
• FAMILY INC. (Reg. No.: 5271813) for banking and financial services,
financial consultation in the field of fraud protection, educational services,
namely, conducting programs in the field of personal finance, insurance,
retirement planning, credit score monitoring, fraud protection, tax
preparation, career planning, and business advice and information;
• THE COATINC COMPANY (Reg. No.: 5085464, COMPANY disclaimed)
for, inter alia, metal coating, hardening, and plating services; and
• JUSTICE INC. (Reg. No.: 4823991) for, books and magazines featuring
stories of fictional heroic and villainous characters, comic books, and
greeting cards and trading cards.
In addition, Applicant has made of record five third-party registrations on the
Principal Register for CYBER-formative marks without disclaimers or claims of
acquired distinctiveness. The following examples are most relevant:
• CYBERASSIST (Reg. No.: 5231401) for, computer software platforms for
cyber security;
• CYBERASSESS (Reg. No.: 5419171) for, computer software for
determining information security vulnerability;
• CYBERPROTECTOR (Reg. No.: 4802505) for, insurance services, namely,
underwriting, issuance and administration of insurance in a variety of
fields including security and privacy liability, privacy breach, network asset
protection, and computer network extortion and terrorism;

11 Applicant Br., p. 19, 7 TTABVUE 20.
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• CYBERCORPS (Reg. No.: 4045881) for, inter alia, educational services,
namely, providing educational programs and training programs for cyber
security students;
When considered in relation to Applicant’s identified wireless digital devices and
computer security services, we find CYBERINC conveys only an indefinite or general
association with CYBER technology and therefore lacks the “degree of particularity”
necessary to be merely descriptive of Applicant’s goods and services. In re TMS Corp.,
200 USPQ at 59. That is, the adjective CYBER, which is defined as “of, relating to, or
involving computers or computer networks (such as the internet)” is so broad in
meaning that it does not immediately convey sufficient knowledge of a quality,
feature, function, or characteristic of Applicant’s goods or services so as to be merely
descriptive. Id.
Instead, Applicant’s mark is analogous to the registered third-party marks such
as PETSINC, FAMILY INC., and THE COATINC COMPANY, listed above. Further,
we note that some marks containing the term CYBER with other arguably descriptive
wording, such as CYBERASSIST, CYBERCORPS, and CYBERPROTECTOR, have
registered. While third-party registrations are not conclusive on the question of mere
descriptiveness, the Examining Attorney has made of record only one third-party
registration disclaiming the wording CYBER. One registration, even disclaiming the
same words as in the present mark, hardly supports a finding that the Office has a
practice of holding the term CYBER to be merely descriptive, much less the compound
term CYBERINC. Thus, we view the weight of the third-party registration evidence
as favoring Applicant’s position that CYBERINC is suggestive. See In re Waverly Inc.,
27 USPQ2d 1620, 1623 (TTAB 1993), quoting In re Women’s Publ’g Co., Inc., 23
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USPQ2d 1876, 1878 (TTAB 1992) (“While superficially it may be easy to dismiss these
[similar third-party] registrations, as we often do, on the basis that the records of
these registrations are not before us and that each case must be decided on its own
merits, it certainly does appear that the Office has in the past taken a different
position with respect to marks of the nature of applicant’s.”).
We find that CYBERINC falls on the suggestive side of the thin line between
suggestive terms and merely descriptive terms. At worst, CYBERINC is highly
suggestive of Applicant’s wireless digital devices and computer security services, but
falls short of being merely descriptive as articulated by the Examining Attorney.
Moreover, each mark must be considered as a whole, and the term CYBERINC, even
if arguably separable, when considered in conjunction with the remainder of the
mark, including the semi-circle graphic and the term AN AURIONPRO COMPANY,
does not create a separate commercial impression analogous to “COMPUTER
COMPANY.” We recognize that the suggestive/descriptive dichotomy can require
drawing fine lines and involves subjective judgment. Indeed, this case may well
present such a challenge in making the necessary classification. Also, we note that
the registration of CYBERINC as a compound term does not preclude competitors
from using the descriptive words “cyber” and “Inc.” separately. In sum, on this record,
we cannot say that the CYBERINC is merely descriptive.
For the forgoing reasons, we reverse the Examining Attorney’s requirement for a
disclaimer of CYBERINC.
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Decision: The refusal to register Applicant’s mark based on the requirement,
made under Trademark Act Section 6(a), for a disclaimer of CYBERINC, is reversed.