InfoSecurity Infrastructure, Inc.

Trademark Trial and Appeal Board

May 28, 2020

87897631 (T.T.A.B. May. 28, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 28, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re InfoSecurity Infrastructure, Inc.
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Serial No. 87897631
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Charles Cresson Wood, Esq.,
for InfoSecurity Infrastructure, Inc.
Edward Fennessy, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Wellington, Pologeorgis and Lebow,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
InfoSecurity Infrastructure, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark DUTIES AUDIT (in standard characters) for “business risk
assessment services,” in International Class 35.1
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is

1 Application Serial No. 87897631 filed on April 27, 2018, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
Serial No. 87897631
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merely descriptive of the services identified in the application. When the refusal was
made final, Applicant requested reconsideration. After the Examining Attorney
denied the request for reconsideration, Applicant appealed to this Board.
We affirm the refusal to register.
I. Merely Descriptive -- Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive of them,” unless the mark has been
shown to have acquired distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f).2
A term is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or
services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). A term “need not immediately convey an idea of each
and every specific feature of the goods [or services] in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of the goods [or services].” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513
(TTAB 2016) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987)).

2 The application is not based on use in commerce (see Note 1) and Applicant does not claim
that if the proposed mark is found to be merely descriptive, it is registrable because it has
acquired distinctiveness. Thus, Section 2(f) is not pertinent to our decision.
Serial No. 87897631
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“Descriptiveness must be evaluated ‘in relation to the particular goods or services
for which registration is sought, the context in which the mark is used, and the
possible significance the term would have to the average consumer because of the
manner of its use or intended use,”’ In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 82 USPQ2d
at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys Water
Sports, 118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978)). “In other words, we evaluate whether someone who knows
what the goods [or services] are will understand the mark to convey information
about them.” Id. at 1515 (citing DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(citing Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also In
re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
Serial No. 87897631
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II. Argument and Analysis
The Examining Attorney relies on the following dictionary definitions of DUTY
and AUDIT and asserts that these words maintain their merely descriptive meanings
when combined because Applicant’s business risk services assess the legal obligations
or duties of its customers:3
DUTY [plural, DUTIES]: 1. Required action or service.

AUDIT: 1. An examination of records or financial accounts to check their
accuracy. … 4. A thorough examination or evaluation.

“Specifically, the addition of the word ‘duties’ to the word ‘audit’ does not result in a
unique, incongruous or nondescriptive meaning in relation to the applicant’s type of
services. In fact, the combination of these words further clarifies their significance in
relation to risk assessment services by indicating the subject matter of the
assessment or audit services.”4
The Examining Attorney also relies on Internet evidence and contends that it
“shows that audits are frequently performed for businesses that must comply with
various legal obligations or duties.”5 This evidence demonstrates that risk assessment
audits of organizations are often conducted to ensure that they are in compliance with
legal, security or regulatory requirements. A few examples include:

3 6 TTABVUE 6, 13; definitions attached to Office Action issued on August 17, 2018.
4 Id. at 13.
5 Id. at 6; evidence attached to Office Action issued on July 10, 2019.
Serial No. 87897631
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[from Infosec website (www.resources.infosecinstitute.com)];6

***

“Finally, consider the audit objectives. This is likely to include compliance to
laws and regulations (e.g., the US Health Insurance Portability Act [HIPAA]
…)”

[from ISACA Journal website article “IS Audit Basics: Auditing Data Privacy”
(www.isaca.org)];7 and

***

“What is an IT auditor? A vital Role for Risk Assessment.
An IT auditor is responsible for analyzing and assessing an organization’s
technological infrastructure to find problems with efficiency, risk management
and compliance.”

[from CIO Digital Magazine website (www.cio.com)].8

Additionally, the Examining Attorney points to statements made by Applicant,
characterizing them as “concessions,” such as Applicant stating that “certainly the

6 Request for Reconsideration after Final Office Action Denied, issued on July 10, 2019, TSDR
p. 8. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the .pdf version of the TSDR records. References to the briefs and other
materials in the appeal record refer to the Board’s TTABVUE docket system.
7 Id. at TSDR pp. 14-17.
8 Id. at TSDR p. 24.
Serial No. 87897631
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word DUTIES does have a meaning in the context of the new products and services
to which the proposed mark would apply, and that meaning relates to the legal duties
of corporate directors and officers.”9 In its response to an Office Action, Applicant
further states that “[r]egarding the applicant’s soon-to-be-offered services, the use of
the word ‘duties’ pertains to the question: ‘Have the customer organization’s directors
and officers fulfilled their legal duties regarding compliance with all information
security and privacy related laws and regulations?’”10
Based on the record before us, we find DUTIES AUDIT is merely descriptive of
Applicant’s business risk assessment services. The Internet evidence shows that
entities, like Applicant, may render risk assessment services for organizations by
conducting audits to ensure that the organization is performing its duties in
compliance with various regulatory and legal requirements. Applicant, itself,
acknowledges that it intends to use the mark DUTIES AUDIT in connection with
making sure a customer organization and its employees are complying their the legal
duties in connection with information security and privacy. Thus, in the context of
these services, these consumers will immediately understand DUTIES AUDIT as
conveying the very purpose or nature of Applicant’s business risk assessment
services.
We have taken into consideration the various arguments Applicant set forth in its
request for reconsideration and brief, including its contention that its mark “cannot

9 Id. at 15-16, referencing language in Applicant’s brief at 4 TTABVUE 8.
10 Response to Office Action filed March 28, 2019, TSDR p. 9.
Serial No. 87897631
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be merely descriptive” because Applicant “has no existing goods or services in the
marketplace to reference.”11 Applicant argues that the fact that “[t]he proposed mark
is to be used for forthcoming goods and services, that will be offered by the Applicant,”
distinguishes this appeal from decisions wherein marks were found merely
descriptive or generic.12
We are not persuaded by Applicant’s reliance on the putative assertion that it “has
no existing goods or services in the marketplace to reference,” because this is
irrelevant. Again, the involved application is based on Applicant’s asserted bona fide
intent to use the mark in commerce and we must look to how the relevant consumer
will perceive Applicant’s mark when it is used in connection with the services
described in the application. Moreover, the fact that Applicant may be the first and
only user of the merely descriptive term DUTIES AUDIT does not justify registration.
See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72
USPQ2d 1833, 1838 (2004) (holding that trademark protection does not provide for
“a complete monopoly on use of a descriptive term simply by grabbing it first.”
(citation omitted)); see also In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1514 (TTAB 2016); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) § 1209.03(c) (Oct. 2018).

11 4 TTABVUE 3.
12 Id. Applicant uses this argument to distinguish the circumstances of this proceeding from
those in In re Steelbulding.com, 415 F.3d 1293 (Fed. Cir. 2005).
Serial No. 87897631
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Applicant also argues that the “meaning of the proposed mark goes substantially
beyond the dictionary meanings, so as to convey a scripted compliance audit process
that is applicable to corporate directors and officers.”13 Applicant acknowledges the
relevant meanings of the two composite terms in its mark and “makes no claims to
either of the two words . . . when they are used in other contexts as individual and
separate words,” but asserts that “[t]here is no way that the consuming public could
get this new meaning from the two words alone (DUTIES AUDIT) when those two
words are standing without explanation, clarification, example, demonstration, or
further information.”14
We disagree with Applicant that the combination of the terms DUTIES and
AUDIT is incongruous, or that the merely descriptive meanings of those words will
be lost on the relevant consumer. The combination does not “evoke[] a non-descriptive
commercial impression,” and each component retains its merely descriptive
significance in relation to the services. In re Oppedahl & Larson LLP, 71 USPQ2d
1372. That is, as the evidence demonstrates and Applicant acknowledges in its
responses, prospective consumers for Applicant’s business risk assessment services
will be organizations that must comply with legal and regulatory requirements. The
evidence further shows that these entities will immediately understand that
Applicant’s mark, when viewed in this context, conveys important information about
Applicant’s services – namely, that Applicant will “audit” or assess the organization

13 4 TTABVUE 4.
14 Id.
Serial No. 87897631
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to ensure that it is performing its “duties” or requirements in order to be in
compliance with certain laws and regulations.
III. Conclusion
We have carefully considered all arguments and evidence of record. We conclude
that DUTIES AUDIT is merely descriptive of Applicant’s identified services since the
mark merely describe a primary purpose or nature of the services, namely, rendering
risk assessment services for organizations by conducting audits to ensure that the
organization is performing its duties in compliance with various regulatory and legal
requirements. We further find that the combination of the descriptive term “duties”
with the descriptive term “audit” does not create a non-descriptive or incongruous
meaning. Instead, we find that each component retains its merely descriptive
significance in relation to Applicant’s identified services, the combination of which
results in a composite mark that is itself merely descriptive.
Decision: The refusal to register Applicant’s DUTIES AUDIT mark under Section
2(e)(1) of the Trademark Act is affirmed.