Isaac Daniel Group, Inc.

Trademark Trial and Appeal Board

Feb 5, 2013

No. 77885250 (T.T.A.B. Feb. 5, 2013)

Hearing: Mailed:
12/18/2012 2/5/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Isaac Daniel Group, Inc.
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Serial No. 77885250
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Carol N. Green, Esq. for Isaac Daniel Group, Inc.

Tina Brown, Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
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Before Quinn, Mermelstein and Kuczma,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Isaac Daniel Group, Inc. filed, on December 3, 2009, an
intent-to-use application to register the term COVERT ALARM
LOCATOR APPARATUS for “shoes, footwear, t-shirts, sports shirts,
sports jerseys, sports jackets, sports pants, sports fleece
pullovers” in International Class 25.
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 proposed mark, when applied to the
goods, is merely descriptive thereof.
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 77885250

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When the refusal was made final, applicant appealed. Both
applicant and the examining attorney filed briefs, and both
appeared at an oral hearing.
Applicant argues that the examining attorney’s refusal is
“premature” inasmuch as the application is based on an intention
to use the mark in commerce. Further, applicant contends that
the examining attorney impermissibly dissected applicant’s mark
rather than considering the mark in its entirety which,
applicant urges, results in a combination of terms that creates
a unitary mark with a unique, non-descriptive meaning.
According to applicant, its mark is, at worst, just suggestive
of applicant’s goods; prospective customers would be required to
engage in a multi-step thought process or use his/her
imagination to discern a feature or characteristic of the
footwear and wearing apparel: “Consumers must go through an
additional mental step of recognizing that, as applied to
Applicant’s goods, ‘COVERT ALARM LOCATOR APPARATUS’ does not
refer to a secret warning or security device for use in finding
someone or something but rather clothing, shoes or other wearing
apparel that may include a hidden device with a GPS locator
apparatus.” (Brief, p. 8).
The examining attorney maintains that the proposed mark is
a combination of merely descriptive terms that creates a merely
descriptive composite mark in its entirety. According to the
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examining attorney, the combination indicates that applicant’s
goods feature a secret warning or security device for use in
finding someone or something. In support of the refusal the
examining attorney introduced dictionary definitions of each of
the terms in the proposed mark, as well as other terms; excerpts
of applicant’s website; excerpts of applicant’s patent that
covers the technology featured in applicant’s goods; and
excerpts of third-party websites showing the use of similar
technology that is covertly embedded in clothing.
We first turn to dispose of applicant’s argument that the
examining attorney prematurely refused registration because the
involved application is based on an intention to use.
Applicant’s argument is not persuasive. An examining attorney
will examine, to the fullest extent possible, an intent-to-use
application for registrability under the appropriate statutory
sections, including Section 2(e)(1), according to the same
procedures and standards that apply to any other application.
Given the examining attorney’s evidence relating to applicant’s
goods and the use of similar technology by third parties, the
examining attorney clearly was in a position to effectively
examine the application and make a substantive refusal based on
the evidence. TMEP § 1102.01 (Oct. 2012) (“The examining
attorney should investigate all possible issues regarding
registrability through all available sources.”).
Ser. No. 77885250

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With respect to the substantive refusal, a mark 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. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007);
and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark 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; rather, it is
sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates,
180 USPQ 338 (TTAB 1973). Whether a mark 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 the goods or
services, and the possible significance that the mark would have
to the average purchaser of the goods or services because of the
manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). 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
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convey information about them.” In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the
determination of whether the composite mark also has a merely
descriptive significance turns on the question of whether the
combination of terms evokes a new and unique 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. See, e.g., In re Petroglyph Games, Inc., 91 USPQ2d
1332 (TTAB 2009) (BATTLECAM is merely descriptive of computer
game software); In re Tower Tech Inc., 64 USPQ2d at 1317
(SMARTTOWER is merely descriptive of commercial and industrial
cooling towers); and In re Sun Microsystems Inc., 59 USPQ2d 1084
(TTAB 2001) (AGENTBEANS is merely descriptive of computer
programs for use in development and deployment of application
programs).
The examining attorney introduced dictionary definitions of
each term appearing in applicant’s proposed mark as follows:
COVERT: secret: not intended to be known, seen, or found
out;

ALARM: warning device: a device for giving a warning of
danger; security device: a security device fitted to
property;

LOCATOR: finding aid: a device that helps somebody locate
something; and
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APPARATUS: equipment: a piece of machinery, a tool, or a
device used for a specific purpose.

Encarta World English Dictionary (North American Ed. 2009). The
record also shows that the abbreviation “GPS” means “global
positioning system: a system for finding exactly where you are
anywhere in the world using satellites.”
(www.macmillandictionary.com).
The record includes excerpts of applicant’s patent (No.
7265666 for an invention entitled “Footwear covert alarm and
locator apparatus”) claiming the technology embedded in
applicant’s footwear:
An alarm apparatus comprising: (a) an article of footwear
comprising a sole and a boot connected to said sole; (b) an
alarm circuit for generating an alarm signal, said alarm
circuit being positioned within, and concealed by, said
sole of said footwear, said alarm circuit including means
for determining the location of said alarm apparatus and
means for encoding said location in said alarm signal; (c)
a covert activation switch for selective activation by the
wearer of said footwear, said covert activation switch
being positioned on an exterior surface of said boot and
electrically connected to said alarm circuit, said covert
activation switch being hidden from view; and (d) means for
transmitting said alarm signal, said means for transmitting
being connected to said alarm circuit, wherein upon
activation of said covert activation switch, said alarm
signal is generated by said alarm circuit and said alarm
signal, including said encoded location, is transmitted by
said transmitting means for receipt at a remote location
thereby notifying a remote user that a local user is in
distress and simultaneously notifying said remote user of
the location of said alarm apparatus.
The present invention relates generally to footwear and,
more specifically, to footwear having an alarm circuit that
can be selectively engaged by the user to transmit a coded
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signal to a monitoring authority. The alarm circuit is
comprised of circuit board, battery, processor, switch and
wiring. The alarm circuit further includes a global
positioning system (GPS) for sending location data to the
monitoring authority. The alarm circuit is selectively
operable via a covered switch for preventing false alarms.
The cover can serve as camouflage rendering switch location
variable and covert.
An improved covert alarm locator apparatus comprising: (a)
a removable electronics module, said removable electronics
module comprising: (1) location determining circuitry; (2)
communications circuitry; (3) logic and control circuitry;
and (4) means for interconnecting said location determining
circuitry, said communications circuitry, and said logic
and control circuitry to one another and to an external
connector; (b) a wearable or carryable article selected
from the group consisting of apparel and carryable items,
said article comprising: (1) a receptacle for receiving
said removable electronics module; (2) connection means for
making electrical connection to said external connector;
and (3) a covert activation switch for selectively
initiating the transmission of an alarm signal by said
communications circuitry, said alarm signal being encoded
with the location of said covert alarm locator apparatus as
determined by said location determining circuitry; and (c)
power supply means for powering said circuitry within said
removable electronics module, wherein said location
determining circuitry is a GPS receiver which is combined
with said communications circuitry in a single cellular
phone based unit, whereby the initial fix for said location
determining circuitry is based on the location of the
nearest cell phone towers, whereby the initial fix can be
rapidly and accurately determined. (emphasis added by the
examining attorney).
As shown by the above patent excerpts, applicant uses the
terminology “covert alarm locator apparatus” in a descriptive,
if not generic manner, in two of its patent claims. “The
specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact terms as to enable any
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person skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same...” 35
U.S.C. § 112.1 See Manual of Patent Examining Procedure (MPEP)
§ 608.01(k) (Aug. 2012). Applicant’s type of use of the
applied-for mark in its claims is antithetical to the definition
and purpose of a trademark. In this regard we also note that a
trademark may be used in patent specifications “if [the
trademark] is distinguished from common descriptive nouns by
capitalization.” MPEP § 608.01(v). Patent examiners are
instructed to inform applicants to “capitalize each letter” of
the trademark or “include a proper trademark symbol, such as ™
or ® following the word.” In its patent, applicant did not
identify COVERT ALARM LOCATOR APPARATUS as a trademark, nor did
the examiner request applicant to do so.
The examining attorney also introduced excerpts of
applicant’s website describing applicant’s goods and the
technology associated therewith:
There's No Hiding with GPS Shoes…. Be careful of that new
pair of shoes the significant other gives you as a
Christmas present: they could be used to monitor your
location. The latest pair in Isaac Daniel's spouse-locating
footwear--the Compass and Blue GPS shoes--now includes
Bluetooth that is capable of talking to a Bluetooth-capable
phone…. As reported here by Navigadget, Isaac Daniel's
original GPS shoes used the Covert Alarm Locator to
broadcast the user's location in case of an emergency.

1 This section was amended in 2012, but the revision does not apply to
applicant’s patent which issued in 2007.
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Isaac Daniel develops and commercializes visionary and
practical fashion and sports technology solutions based on
embedded Global Positioning Systems (GPS) technology and
Location-Based Services (LBS) for use by individuals and
organizations…. Highly secure, Isaac Daniel products
transmit positioning at the wearer’s demand and
authorization, ensuring total user privacy while providing
quality and convenience for real-life situations.
Isaac Daniel is an inventor and designer of high-tech
products who has created a full line of wearable technology
delivered in fashionable accessories…. The original
inventor of GPS embedded shoes, Isaac Daniel introduced the
first line of footwear designed for consumers that offered
embedded technology for personal security via human
logistics. These products provided a way to track a
wearer’s location, yet was fully customizable – leaving
privacy controls in the owner’s hands to add or restrict
information sharing.
Fashionable footwear from Nike and Adidas may deliver style
and prestige, but they haven’t got what Isaac Daniel’s
Compass™ shoes deliver – peace of mind, thanks to an
embedded microcomputer and GPS device…. The Compass™ brand
incorporates a GPS module allowing authorities to locate a
missing or endangered loved one –within a yard’s distance -
- almost immediately, using the patented Quantum Satellite
Technology (QST) and a monitoring service called ID Conex.
Unlike cell-phone based GPS tracking devices, the GPS
technology utilized by Compass™ shoes locks out
unauthorized users from knowing the location of a loved one
– information only trained ID Conex employees at one of
their global monitoring stations are authorized to access
and pass on to law enforcement agencies.
The first sneakers in the world to contain a ‘Covert Alarm
Locator Apparatus’ in the form of a tiny GPS chip. This
chip can do lots of things like monitoring your heart rate
speed and body temperature, acting as a location beacon to
help people find you. The sneakers also have a wireless
Bluetooth mic and speaker embedded, so you can call for
help or otherwise look rather strange talking to your
shoes…. This hi-tech shoe comes with Quantum Satellite
Technologies, GPS enabled devices located in a hidden part
of the shoes. (emphasis added by the examining attorney).
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It is clear from the above that applicant offers goods featuring
“embedded GPS (Global Positioning System) technology.” Indeed,
applicant indicated that it “intends that the goods identified
by the mark ‘COVERT ALARM LOCATOR APPARATUS’ will include a GPS
locator device that will allow monitoring of the device and
ultimately the wearer.” (Response, 03/31/2011).
We acknowledge applicant’s argument that purchasers would
not necessarily associate or expect GPS technology in clothing
and footwear. This argument is belied, however, by additional
evidence of record showing a trend in the industry to embed GPS
technology in such goods, and by applicant’s own promotion of
its goods with such a feature. Examples of such use by third
parties include the following:
For many people, GPS is still a new gadget
for outdoor enthusiasts and the military,
but GPS technology is actually becoming
integrated into everyday life. There is no
better example of this than GPS clothing...
GPS clothing isn’t particularly different
from the clothes you are wearing now. It
simply has a GPS transponder sewn into them.
(www.gps.toptenreviews.com)

Lightning GPS has come up with easy-to-use
covert devices which can give you the peace
of mind that keeps you awake at
night....Lightning GPS works hard to develop
the best Child Tracking GPS devices
available on the market today....GPS
Jackets, GPS Strollers, GPS Clothing, GPS
backpacks all use Lightning GPS hardware
built into their design.
(www.lightninggps.com)

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Solar-powered GPS-trackable
clothing...Covert Asset Tracking Systems, a
company based in the UK, has just announced
plans for producing a solar-powered GPS-
trackable clothing range....The wearer of
the clothes can be located from almost
anywhere in the world and from any internet
connection. The clothing is also
waterproof, machine-washable, and solar-
powered so that it never has to be
recharged.
(www.slashgear.com)

If a newborn baby has a covert GPS tracking
system in their clothing and was taken from
the hospital nursery parents could easily
locate their missing child.
(www.tracking-system.com)

Based on the evidence of record, we agree with the
examining attorney’s assessment that the proposed mark is a
combination of merely descriptive terms that, when combined,
form a merely descriptive mark as a whole. The proposed mark
merely indicates that applicant’s goods feature a secret warning
or security device for use in finding someone or something. The
combination of merely descriptive terms does not evoke a new and
unique commercial impression. Rather, each component of the
composite mark retains its merely descriptive significance in
relation to applicant’s goods, thus resulting in a composite
that is itself merely descriptive. DuoProSS Meditech Corp. v.
Inviro Medical Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753
(Fed. Cir. 2012) (SNAP SIMPLY SAFER is merely descriptive for
“medical devices, namely, cannulae; medical, hypodermic,
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aspiration and injection needles; medical, hypodermic,
aspiration and injection syringes”); and In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM
is merely descriptive of computer software for managing a
database of records that could include patents for tracking the
status of the records by means of the Internet). No imagination
is required by a prospective purchaser or user to discern that
applicant’s clothing and footwear feature a covert alarm
apparatus to locate someone or something.
Although applicant asserted that its proposed mark has a
separate unitary meaning, applicant never indicated what this
separate, unitary, incongruous or otherwise non-descriptive
meaning is in relation to the identified goods. Further, the
fact that applicant may be the first and only user of the
specific combination “covert alarm locator apparatus” is not
dispositive, where, as here, the evidence shows that the
composite mark as a whole is merely descriptive. See, e.g., In
re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
Decision: The refusal to register is affirmed.