Fedrigoni S.p.A.

Trademark Trial and Appeal Board

Mar 27, 2012

No. 79069010 (T.T.A.B. Mar. 27, 2012)

Mailed: Hearing:
March 27, 2012 February 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fedrigoni S.p.A.
________

Serial No. 79069010
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Keith A. Weltsch of Scully Scott Murphy & Presser PC, for
Fedrigoni S.p.A.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Grendel, Cataldo, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Fedrigoni, S.p.A.1, applicant herein (“applicant”),
seeks registration on the Principal Register of the mark
“MULTILEVEL,”2 in standard character format, for goods
identified as follows:

1 At the time the appeal brief was filed, the applicant was
“Fabriano Securities S.R.L.” Applicant submitted a change of
ownership, which was recorded on June 23, 2011.
2 Serial No. 79069010, filed on January 29, 2009, under Trademark
Act Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79069010
2
International Class 2: Metal foils for printers, metal in
powder form for printers, color pigments for printers;

International Class 9: Printed holograms, magnetically
encoded credit cards, encoded electronic chip credit cards,
magnetically encoded identity cards, encoded electronic
chip identity cards;

International Class 16: Banknotes, printed currency, paper
for banknotes, paper for passports, non-magnetically coded
volunteer identity cards, security paper containing
security threads; security stripes and patches in the
nature of applied holograms used in the manufacture of
banknotes, security documents, cheques and travel checques;
paper products, namely, goods in the form of sheets for
securement applications, namely, banknotes, printed
currency, paper for banknotes, paper for passports,
identity cards, security paper containing security threads,
identification documents, watermark paper, paper
impregnated with chemicals; special security threads only
for paper; paper used for making money; catalogues in the
field of paper products; and

International Class 17: Security threads, security threads
for use in production of banknotes, of documents, of
cheques, of travellers' cheques, of identification
documents and of watermark paper.

The trademark examining attorney refused registration
on the ground that applicant’s mark is merely descriptive
of the identified goods under Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1). The examining attorney
further made final a requirement for a more definite
identification of goods pursuant to 15 U.S.C. §1051(a)(2)
and 15 U.S.C. §1052(b)(2). Both applicant and the
examining attorney filed briefs. At the request of
applicant, an oral hearing was convened by this panel on
February 9, 2012.
Ser. No. 79069010
3
Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of 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 In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). 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).
The examining attorney submitted the following
definition from The American Heritage Dictionary of the
English Language (4th ed. 2009):
“Multilevel”: Adjective Having several levels.

The examining attorney submitted evidence to show the
use of the term “multilevel” in a descriptive manner with
Ser. No. 79069010
4
several of the goods identified in the application. In
particular, the examining attorney showed use of the term
“multilevel” with the term “hologram,” identified in
International Classes 9 and 16, and the term “watermark”
identified in International Class 16, to show “multilevel”
security is often touted by use of these goods. Some
examples include the following:
Multi-level security needed for war on counterfeit
drugs: Machine readable holograms applied to packaging
along with a variety of other multi-level security
features used at various stages throughout the supply
chain can help to reduce the infiltration of fake
drugs. www.info4security.com; Attached to 7/7/09
Office Action, p.9.

The card has all the features of the trendy smart card
and at the same time holds a holographic chip with
high density optical information content. But, in
sharp deviation from conventional plastic ID cards
with embossed security holograms, the HoloSecure card
itself is a hologram with metallic structure and has
multilevel security features.
http://tehnoparktbi.wordpress.com/2009/09/30; attached
to 2/8/10 Office Action p28-29.

The thinner area in the security paper can have a
uniform thickness or else be formed as a multi-level
watermark. Security paper and method and device for
producing the same, Patent Application 20050224203;
Attached to 9/2/10 Office Action p.7.

The present invention relates to a dewatering screen
for manufacturing paper having multi-level watermarks,
having carrier mold that exhibits, in a fractional
region, a multi-level relief in the form of the
watermark to be produced. Dewatering screen and
method for the production thereof, Patent Application
20100175843; Attached to 9/2/10 Office Action p.19.
Ser. No. 79069010
5

In the production of watermarked paper, a distinction
is made between two-level watermarks with a strong
light-dark effect and multilevel watermarks with many
transitions between light and dark. Papermaking mould
for producing two-stage watermarks and method for
producing the same, U.S. Patent Application 10/489666;
Attached to 9/2/10 Office Action p.35.

The examining attorney further purported to submit
evidence of the term “multilevel” used in a descriptive
manner with goods set forth in International Class 17
(“security threads”) and International Class 2 (“metal in
powder form for printers, color pigments for printers”).
However, there was no clear evidence of any use with regard
to any of the goods identified in Class 2. As for the
“security threads,” we take judicial notice of the
definition of “security thread” as “a colored thread
running through the paper of a piece of paper money, used
to deter counterfeiting.”3 The main evidence submitted of
the term “multilevel” with regard to “security threads” was
as follows:
Security Threads Feature – “The value of Security
threads – multi-level protection against counterfeits”
www.honeywell.com, Attached to 2/8/10 Office Action.

Security Thread-This thread is so reliable as an anti-
counterfeiting measure that it is used in government
currencies around the world.

3 Dictionary.com (2012). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 79069010
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Security links-GSI also offers a covert measure,
utilizing an organic phosphor mixed with our links or
varnishes and printed on a label.
GSI can also combine these two technologies to provide
a multi-level solution. www.gsitech.com; Attached to
7/7/09 Office Action, p4

Applicant, for its part, submitted a few registrations
containing the term “multilevel,” and where the term was
not disclaimed. However, several of these were cancelled
and none of them related to the goods at issue in the
current application. Accordingly we do not consider them
to be probative of the suggestiveness of the term to the
goods at issue herein. Based on the evidence of record, we
find the term “multilevel” to be merely descriptive of a
feature or function of the goods that applicant seeks to
register in International Classes 9 and 16 in that it
describes the “multilevel” security attainable with at
least “holograms,” and “watermarks.”
However, we do not find that the evidence of record is
sufficient to find the term “multilevel” to be merely
descriptive of the goods in International Class 17. There
is only one clear reference of record showing the term used
descriptively to show “security threads” as implementing
“multilevel” security protection. The other references use
the term “multilevel” only in regard to combining goods
identified in the application with products not identified
Ser. No. 79069010
7
in the application. This requires a multi-step reasoning
process, and results in our finding the mark to be
“suggestive” as regards the goods in International Classes
2 and 17. In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) (if a mark requires
imagination, thought, and perception to arrive at the
qualities or characteristics of the goods or services, then
the mark is suggestive). This is particularly so since, in
a Section 2(e)(1) analysis, doubt must be resolved for the
applicant. See In re Conductive Systems, Inc., 220 USPQ
84, 86 (TTAB 1983).
In sum, it is clear that a consumer would understand
“multilevel” used in connection with applicant's goods in
International Classes 9 and 16 as conveying information
about them. See In re Tower Tech Inc., 64 USPQ2d at 1316-
17; see also In re Conductive Services, Inc., 220 USPQ 84,
86 (TTAB 1983). However, it is not clear that a consumer
would immediately understand the term to convey information
about the goods identified in International Classes 2 and
17.
Identification of Goods
The examining attorney additionally made final a
requirement requiring a more definite identification of
goods pursuant to 15 U.S.C. §1051(a)(2) and 15 U.S.C.
Ser. No. 79069010
8
§1052(b)(2). The requirement is made only as to certain
goods in International Classes 16 and 17. Specifically,
the examining attorney required (1) that applicant indicate
that the “holograms” identified in International Class 16
be identified as “printed”; (2) that the “identity cards”
identified in International Class 16 be identified as “non-
magnetic”; and (3) that the “security threads, security
threads for use in production of banknotes, of documents,
of cheques, of travellers’ cheques, of identification
documents and of watermark paper” identified in
International Class 17 be identified as to both their field
of use and their material composition.
It is important to note that with applications filed
under Section 66(a), the Office is bound by the
classification of goods set forth in the application, even
if it is found that they are mischaracterized. 37 C.F.R.
§2.85(d). The rule states:
In an application under section 66(a) of the Act
or registered extension of protection, the
classification cannot be changed from the
classification assigned by the International
Bureau of the World Intellectual Property
Organization, unless the International Bureau
corrects the classification. Classes cannot be
added, and goods or services cannot be
transferred from one class to another in a
multiple-class application.

Ser. No. 79069010
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Accordingly, even if misclassified, the Office must
accept the classification in the application. That said,
the rule does not stop the Office from seeking a more
definite identification of goods within a class. Id. See
also TMEP §1904.02(c) (8th ed. 2011) (“If the initial
identification of goods/services is not definite, the
classification cannot be changed and the scope of the
identification for purposes of permissible amendment is
limited by the IB-assigned classification”).
Applicant argues that the Office should grant the
application as it is since applicant has previously
registered another application for the same goods, in the
same classes, Registration No. 3889251. The Federal
Circuit, our primary reviewing court, addressed this exact
issue, albeit not in a Section 66(a) situation, in the case
In re Omega, 494 F.3d 1363, 83 USPQ2d 1541 (Fed. Cir.
2007). Applicant there made the same argument, upon final
requirement for more definite identification of goods, that
it was unfair, and indeed that applicant would be
prejudiced because it already owned registrations listing
the goods under the disputed designations. The Court
rejected that argument, finding that the Office has a right
to require trademark owners to identify goods with
specificity. Id. at 1543. Accordingly, we adopt that
Ser. No. 79069010
10
reasoning and find that applicant must identify each of its
goods with specificity.
Applicant also argues that it is already using “common
names, using terminology that is generally understood.”
(appl’s brief at 16); quoting from TMEP §1402.01. We
consider this argument. Regarding the first requirement
for specific goods (“holograms”), the examining attorney
refers to the ID manual in noting that the only type of
“holograms” included therein are “printed holograms.”
(examining atty’s brief at 20 of 23). While we agree that
this is a correct interpretation of the ID Manual, we find
that the terminology used in the application, namely
“applied holograms used in the manufacture of banknotes” in
International Class 16 is sufficiently definite as to not
require amendment. Accordingly, although this exact
identification of goods is not found in the ID Manual, we
find it to be acceptable, and we reverse this first
requirement for more definite goods.
Regarding the second requirement for specific goods,
(“identity cards”), the examining attorney notes that the
ID manual contains several entries for “identity cards,”
but that they are more specifically delineated as
“magnetically” or “electronically encoded” (IC 9) or
“nonmagnetically encoded” (IC 16). Id. Due to the
Ser. No. 79069010
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specificity required for any entry for “identity cards” in
the ID manual, we agree that it was appropriate for the
examining attorney to require applicant to make a
designation more definite than simply “identity cards.”
Accordingly, we affirm this second requirement for more
definite goods.
Regarding the third requirement for more definite
goods (“security threads”), there is no entry for “security
threads” in the ID Manual. Rather, the examining attorney
analogizes to other types of “threads” in International
Class 17 in making the requirement that both field of use
and material composition must be designated. The types of
“threads” included in International Class 17 of the ID
Manual are "chemical fiber thread and yarn not for textile
use"; "covered rubber thread and yarn [not for textile
use]"; "plastic soldering threads"; "rubber thread [not for
textile use]"; " and "rubber thread and covered rubber yarn
[not for textile use]."
We note again the definition of “security thread” as
“a colored thread running through the paper of a piece of
paper money, used to deter counterfeiting.” This does not
particularly relate to any of the types of “threads”
invoked by analogy by the examining attorney. Meanwhile,
there are other types of “threads” allowed in the ID Manual
Ser. No. 79069010
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without further specificity as to more particular field of
use or composition of matter. These include “thread for
medical use” in IC 10; “thread snips” in IC 8; “darning
thread” in IC 23; “elastic thread” in IC 23; and
“embroidery thread” in IC 23, among others. We find that,
by analogy, applicant’s “security threads, security threads
for use in production of banknotes, of documents, of
cheques, of travellers’ cheques, of identification
documents and of watermark paper” is as clear in scope as
these other designation of “threads” is, and is therefore
sufficiently definite. Accordingly, we reverse this third
requirement for more definite goods.
Conclusion
We affirm the refusal to register based on Section
2(e)(1) for the goods in International Classes 9 and 16.
We also affirm the requirement for a more definite
identification for certain of the goods in International
Class 16. Although only certain goods in Class 16 are
affected by the latter requirement, the entire class fails
based on the former.
We reverse the refusal to register based on Section
2(e)(1) for the goods in International Classes 2 and 17.
We also reverse the requirement for a more definite
identification for the goods in International Class 17.
Ser. No. 79069010
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Accordingly, all of the goods in Classes 2 and 17 will
proceed to publication.
Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed as to International Classes 9
and 16. It is denied as to Classes 2 and 17. The refusal
as to the identification of goods is affirmed as to the
goods in International Class 16.
The goods in International Classes 2 and 17 will
proceed to publication.