epcSolutions, Inc.

Trademark Trial and Appeal Board

May 1, 2009

No. 76675389 (T.T.A.B. May. 1, 2009)

Mailed:
May 1, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re epcSolutions, Inc.
________

Serial No. 76675389
_______

John S. Hale of Gipple & Hale for epcSolutions, Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Grendel and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant epcSolutions, Inc. seeks registration on the
Principal Register of the mark ASSET OVER INTERNET PROTOCOL
(in standard character form) for goods identified in the
application, as amended, as “computer network systems
comprised of computer hardware and software for creating
radio frequency identification tags for assets and tracking
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76675389
2
those same assets in transit,” in Class 9.1 Applicant has
voluntarily disclaimed the exclusive right to use INTERNET
PROTOCOL apart from the mark as shown.
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark is merely descriptive of the goods identified in the
application. Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1).
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney have filed briefs on
appeal.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and

1 Serial No. 76675389, filed on April 11, 2007. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b). As discussed below, in the application as filed,
applicant identified its goods as “an asset over internet
protocol network for work in process, fixed assets, finished
goods assets and human assets, tagged with RFID tags.”
Ser. No. 76675389
3
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). 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; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for 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, 593 (TTAB 1979).
Moreover, it is settled that “[t]he 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 or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
Ser. No. 76675389
4
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applying these principles in the present case, we find
as follows.
To review, applicant’s mark is ASSET OVER INTERNET
PROTOCOL (INTERNET PROTOCOL disclaimed), and applicant’s
goods are identified in the application (as amended) as
“computer network systems comprised of computer hardware
and software for creating radio frequency identification
tags for assets and tracking those same assets in transit.”
First, we find that the word ASSET in applicant’s mark
merely describes a significant feature and purpose of
applicant’s goods, i.e., computer hardware and software for
use in connection with the management and tracking of a
company’s physical assets. As stated in applicant’s
original identification of goods (see above at footnote 1),
such assets include “fixed assets” and “finished goods
assets.” Applicant also uses “assets” descriptively in its
current identification of goods, stating that its hardware
and software are used to create radio frequency
identification (RFID) tags used “for assets and tracking
those same assets in transit.”
Ser. No. 76675389
5
The record shows third-party descriptive use of
“assets” and “asset tracking software” in connection with
the tracking of assets by means of RFID (emphasis added):
Getting the Most from RFID … In recent months,
radio frequency identification (RFID) has become
easier to use and more powerful. As a result,
it’s gaining wider adoption among companies that
need to track inventory, equipment, or other
assets.2

RFID Fixed Asset Tracking Software - The
RFTrack.NET fixed asset tracking platform helps
organizations improve the visibility of their
assets by enabling them to automate physical
asset inventories, track the movement of assets,
and monitor assets in real-time for security and
safekeeping. … RFTrack.NET is a web-based
application that is designed to easily integrate
with and complement your existing Asset
Management, fixed Asset Accounting, and other
back-end systems or operate as a stand-alone
system. It can be purchased as an On-Premise
license or as an On-Demand (hosted) subscription.3

WiseTrack is Asset Tracking Software designed to
control and manage mobile and fixed assets.
WiseTrack centrally manages: what assets you
have, where they are, who uses them, and all
costs associated to the items. WiseTrack is a
comprehensive asset tracking solution with
extensive bar coding and numerous Radio Frequency
Identification (RFID) technologies and functions.4

2 www.cisco.com – IQ Magazine (2d quarter 2006). (February 29,
2008 final Office action.)

3 www.inlogic.com. (October 1, 2008 denial of request for
reconsideration.)

4 www.wisetrack.com. (October 1, 2008 denial of request for
reconsideration.)

Ser. No. 76675389
6
We are not persuaded by applicant’s argument that
“asset” is not descriptive because it could refer to
essentially anything of value, such as jewelry, one’s home,
or one’s education. (Brief at 3.) As noted above, our
mere descriptiveness determination is based on the use of
the term in connection with the goods identified in the
application, not in the abstract. That a term might have
different meanings in other contexts is not determinative.
See In re Bright-Crest, Ltd., supra, 204 USPQ at 593. In
the context of applicant’s goods, “asset” clearly refers to
a company’s physical assets such as inventory and
equipment.
Based on this evidence, including applicant’s own
usage, we find that ASSET is merely descriptive of
applicant’s goods. Relevant purchasers will immediately
understand that ASSET in applicant’s mark refers to and
describes a key feature of the nature, purpose and
application of applicant’s hardware and software, i.e.,
that it enables the tracking of physical assets.
Furthermore, we find that the word ASSET in applicant’s
mark is merely descriptive notwithstanding applicant’s
omission of the word “tracking” from the mark. Cf. In re
Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)(ATTIC
generic for “automatic sprinklers for fire protection,”
Ser. No. 76675389
7
i.e., “attic sprinklers,” despite applicant’s omission of
the word “sprinkler” from mark); Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998)(MASSFLO generic for
“flowmeters for the measurement of flow of mass of
liquids,” i.e., “mass flowmeters,” despite applicant’s
omission of “meter” from mark); In re U.S. Cargo Inc., 49
USPQ2d 1702 (TTAB 1998)(CARGO in mark U.S. CARGO highly
descriptive of “towable trailers for carrying cargo…,”
i.e., “cargo trailers,” despite applicant’s omission of
“trailer” from mark).
Next, we find that OVER INTERNET PROTOCOL in
applicant’s mark merely describes applicant’s goods, which
employ or utilize an “over Internet Protocol” in performing
their function. According to the evidence of record:
Internet Protocol, or IP, is the common
“language” that allows different types of
information, such as e-mail and other data, voice
communications, and video, travel seamlessly over
the same network.5

The Internet Protocol (IP) is the method or
protocol by which data is sent from one computer
to another on the Internet.6

We note that applicant has voluntarily disclaimed INTERNET
PROTOCOL.

5 www.cisco.com, IQ Magazine (4th quarter 2005). (Feb. 29, 2008
final Office action.)

6 www.searchvoip.techtarget.com. (June 29, 2007 first Office
action.)
Ser. No. 76675389
8
Regarding OVER INTERNET PROTOCOL, the record shows
that when specific applications utilize an Internet
Protocol, they are commonly identified by combining a
descriptor of the application with the words “over Internet
Protocol.” For example:
Voice over Internet Protocol (VoIP) is a
technology that allows you to make voice calls
using a broadband Internet connection instead of
a regular (or analog) phone line.7

What exactly IS IPTV (television over Internet
Protocol)?8

In its brief at pages 3-4, applicant acknowledges the
mere descriptiveness of “Internet Protocol” and “over
Internet Protocol”:
The phrase “Internet Protocol” has become
ubiquitous, both used by itself and in
combination with other descriptors. Hence, for
example, Voice Over Internet Protocol (VoIP)
describes voice transmissions over the Internet
and is widely understood to refer to Internet
telephony. Similarly, Video Over Internet
Protocol (Video-IP) or Internet Protocol TV
(IPTV) simply describe technology. … Moreover,
there are hundreds of different Internet
protocols, used for a wide variety of uses…

Based on this evidence, we find that the words OVER
INTERNET PROTOCOL in applicant’s mark are merely
descriptive of applicant’s goods in that they immediately

7 www.fcc.gov. (February 29, 2008 final Office action.)

8 www.youtube.com. (February 29, 2008 final Office action).
Ser. No. 76675389
9
describe a key aspect of how the goods function, i.e., by
means of an over Internet Protocol.
We have found that ASSET and OVER INTERNET PROTOCOL,
considered separately, are merely descriptive of
applicant’s goods. We also find, more importantly, that
the composite term ASSET OVER INTERNET PROTOCOL is merely
descriptive of the goods.
As noted above, an application which functions by
means of an over Internet Protocol is identified by
combining a term which describes the application and the
words “over Internet Protocol.” In this case, ASSET
directly describes the a key feature of the application for
which applicant’s goods are used, i.e., the tracking of
assets, and OVER INTERNET PROTOCOL directly describes how
that asset tracking function is performed, i.e. by means of
an over Internet Protocol. The merely descriptive
significance of ASSET and of OVER INTERNET PROTOCOL is not
negated by combining the two terms; the combination does
not create a composite that is incongruous or otherwise
distinctive. The composite term is as merely descriptive
as the two terms are when considered separately.
Applicant argues that its mark is not merely
descriptive because although asset tracking by means of
RFID is an established technology, and over Internet
Ser. No. 76675389
10
Protocol is an established technology, the two technologies
have never been combined before, and relevant purchasers
therefore would have no basis for understanding ASSET OVER
INTERNET PROTOCOL to have any meaning as applied to these
novel goods.
In fact, while Applicant concurs that RFID
technology and the Internet are well known, the
combination of the two is unknown to the general
consumer. … Applicant emphasizes that these are
extant technologies being combined in a
heretofore unknown manner. As such, the mark
“Asset Over Internet Protocol” cannot possibly be
merely descriptive because it is neither used nor
understood to have a meaning. Because this is a
new technology, there is not any identification
within the industry, or within the general
public, that would identify the use of RFID
technology with this mark. The word mark ASSET
OVER INTERNET PROTOCOL does not convey immediate
information and is not merely descriptive as a
consumer or individual would not make a
correlation between the mark and the goods. The
fact that RFID data can be transmitted via the
internet is not relevant to a descriptiveness
rejection.

(Applicant’s Brief at 4-5.) We are not persuaded by this
argument.
First, as noted above, “[t]he 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 or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc, supra, 64 USPQ2d at 1316-17.
Ser. No. 76675389
11
Second, it is not dispositive of our mere
descriptiveness determination that an applicant may be the
first or only user of the term in question. In re Central
Sprinkler Co., supra, 49 USPQ2d at 1199.
Third, and in any event, it appears from the evidence
of record that combining RFID asset tracking software and
the Internet is not as unusual or unexpected as applicant
claims. For example (emphasis added):
WiseTrack is Asset Tracking Software…a
comprehensive asset tracking solution with
extensive bar coding and numerous Radio Frequency
Identification (RFID) Technologies … Web Based
Asset Tracking Solutions including asset
enrollment and downloading via a web browser or
TCP/IP connection.9

For instance, RFID can be used in combination
with wireless sensor networks (WSN) and actuators
to monitor, store and relay information having to
do with a wide variety of physical conditions
along with asset identification and location in
real-time via the Internet….10

Commentary: The year of living RFID” … RFID is
one of many technologies that will extend the
Internet to the physical world. … In 2004, many
companies will need to adopt RFID. Retailers
like Wal-Mart Stores and Tesco and organizations
like the U.S. Department of Defense and the Food
and Drug Administration are asking companies to
use RFID to track assets, products and materials.
… What to expect in 2005… RFID traffic will flow
to existing applications and over existing

9 www.wisetrack.com. (October 1, 2008 denial of request for
reconsideration.)

10 www.linuxinsider.com. (October 1, 20008 denial of request for
reconsideration.

Ser. No. 76675389
12
networks. Eventually, RFID data will travel over
an Internet Protocol network….11

RFID Fixed Asset Tracking Software - The
RFTrack.NET fixed asset tracking platform helps
organizations improve the visibility of their
assets by enabling them to automate physical
asset inventories, track the movement of assets,
and monitor assets in real-time for security and
safekeeping. … RFTrack.NET is a web-based
application that is designed to easily integrate
with and complement your existing Asset
Management, fixed Asset Accounting, and other
back-end systems or operate as a stand-alone
system. It can be purchased as an On-Premise
license or as an On-Demand (hosted)
subscription.” 12

Finally, we note that in the identification of goods
set forth in the application as originally filed, applicant
itself used the term “asset over internet protocol” in a
merely descriptive manner, and indeed in a generic manner,
to identify its goods, i.e., “[a]n asset over internet
protocol network for work in process, fixed assets,
finished goods assets and human assets, tagged with RFID
tags.” We find that applicant’s own use of “asset over
internet protocol” in this manner belies its claim that the
mark is not merely descriptive.
For all of the reasons discussed above, we find that
the mark applicant seeks to register, ASSET OVER INTERNET

11 www.news.com (January 26, 2004 article at c/news.com).
(February 29, 2008 final Office action.)

12 www.inlogic.com. (October 1, 2008 denial of request for
reconsideration.)
Ser. No. 76675389
13
PROTOCOL, is merely descriptive of the goods identified in
the application, i.e., “computer network systems comprised
of computer hardware and software for creating radio
frequency identification tags for assets and tracking those
same assets in transit.” We therefore find that
registration of applicant’s mark on the Principal Register
is barred by Trademark Act Section 2(e)(1).

Decision: The refusal to register is affirmed.