Tönnjes ISI Patent Holding GmbH

Trademark Trial and Appeal Board

Apr 7, 2017

No. 79131389 (T.T.A.B. Apr. 7, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: April 7, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tönnjes ISI Patent Holding GmbH
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Serial No. 79131389
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Laurence P. Colton of Smith Tempel Blaha LLC,
for Tönnjes ISI Patent Holding GmbH
N. Gretchen Ulrich, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Zervas, Cataldo and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Tönnjes ISI Patent Holding GmbH (“Applicant”) seeks registration on the
Principal Register of the mark IDEPLATE (in standard characters) for
Alloys of common metals; non-luminous and non-
mechanical metal signs; metal license plates for vehicles;
identity plates of common metal; identification tags of
metal (in International Class 6);1

1 Application Serial No. 79131389 was filed on April 9, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 66(a) of the
Trademark Act. The Section 66(a) application is based on International Registration No.
1163525 (issued April 9, 2013) with a priority claim of November 8, 2012.
Serial No. 79131389
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Radio frequency identification (RFID) tags; radio
frequency identification (RFID) readers; encoded tags of
plastic or metal for use in the field of passive labeling,
tracing and tracking of vehicles; vehicle tracking devices
comprised of radio frequency identification (RFID) tags
and hologram apparatus, all for use in connection with
vehicle tracking and vehicle monitoring (in International
Class 9);
Plaques made of plastic; identity plates containing
numbers, not of metal; numbered identity plates made of
flexible plastic for motor vehicles (in International Class
20);
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(1), 15 U.S.C. § 1052(e)(1).2 When the refusal was made final,
Applicant appealed. Thereafter, the Examining Attorney requested a remand to
introduce additional evidence into the record, also issuing a subsequent final Office
Action. Applicant was then allowed an opportunity to file a supplemental appeal
brief, which was followed by the Examining Attorney’s brief. We affirm the refusal to
register.
I. Preliminary Issue
Before proceeding to the merits of the refusal, we address evidentiary matters.
With her appeal brief, the Examining Attorney has requested that the Board take
judicial notice of dictionary definitions for “identification,”3 “e,” “electronic,” “license
plate,” and “plate.” The request is granted.4

2 The Examining Attorney initially refused registration under both Section 2(d), 15 U.S.C. §
1052(d), and Section 2(e)(1), 15 U.S.C. § 1052(e)(1), but later withdrew the Section 2(d)
refusal. July 21, 2016 Office Action p.1.
3 The definition for “ID” was made of record in the March 4, 2014 Office Action. p. 71.
4 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
Serial No. 79131389
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The Examining Attorney has objected to Applicant’s request in its supplemental
appeal brief that the Board take judicial notice of an abandoned application (Serial
No. 75688755) and a cancelled registration (Registration No. 3182027), neither of
which have been made of record.5
Inasmuch as the Board does not take judicial notice of third-party registrations
and applications, we decline to take judicial notice thereof. In re Thomas Nelson Inc.,
97 USPQ2d 1712, 1717 n. 18 (TTAB 2011). We note, in any event, that the
registration and application are of little probative value. Cancelled or expired
registrations are not evidence of anything except that they issued, and abandoned
applications are evidence only that the applications were filed. See In re Brown-
Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB 2006); Interpayment Services Ltd.
v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
II. Section 2(e)(1) Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
applied to the goods or services of the applicant, is merely descriptive of them. 15
U.S.C. § 1052(e)(1). “A term is merely descriptive if it immediately conveys knowledge

1375, 1377 (TTAB 2006). See also 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). Nonetheless, we would be remiss not to note that the Examining Attorney could easily
have introduced these definitions into the record during prosecution of the involved
application.
5 Applicant requested the Board take judicial notice of two EPLATE registrations and three
EPLATE applications but it has only identified two EPLATE applications in its brief. As
noted by the Examining Attorney, Registration No. 4310718 and application Serial No.
85583249, are in the record as they were provided by the Examining Attorney in connection
with the now withdrawn Section 2(d) refusal. March 4, 2014 Office Action, pp. 2-6.
Application Serial No. 85583249 is now abandoned.
Serial No. 79131389
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of a quality, feature, function, or characteristic of the goods or services with which it
is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). Whether a term is merely descriptive is
determined not in the abstract, but “in relation to the particular goods for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Bayer Aktiengesellschaft, 82 USPQ2d
at 1831. See also In re Chamber of Commerce, 102 USPQ2d at 1219.
When two or more merely descriptive terms are combined, the determination of
whether the composite also has a merely descriptive significance turns on whether
the combination of terms evokes a new and unique commercial impression. See e.g.,
In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR &
SPICE double entendre for bakery products). 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 Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer database management software).
Applicant’s goods include license plates or identity tags for vehicles, encoded tags
for vehicle tracking, and vehicle tracking devices comprised of radio frequency
identification (RFID) tags. Applicant’s patent application describes some of the
aforementioned goods as an identification device, in the form of a vehicle license plate,
Serial No. 79131389
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with a data carrier fixed in the license plate body.6 “The data carrier preferably has
at least one chip, preferably a passive Radio Frequency Identification Chip (RFID)
….”7 Applicant’s website www.toennjes.com refers to its vehicle identification goods
as a “Radio Frequency Identification Plate” which it describes as a “transmitting
licence plate … with … integrated fraud resistant and thief-proof data memory …
[t]he core of the system is a memory chip which is embedded in the vehicle’s
aluminum license plate during the production process.”8
The following definitions are in the record:
“identification” with the most relevant definitions: “form of
identification” and abbreviation, “ID,” which is defined as “proof or
evidence of identity.”9

“ID” with the most relevant definitions “a form of identification” and as
an abbreviation for “identification.”10

“e” defined as “electronic.”11
“electronic” with the most relevant definition: “of, relating to, or utilizing
devices constructed or working by the methods or principles of
electronics.”12

“license plate” defined as “a rectangular, usually metal plate that bears
a sequence of numbers, letters, or both and is issued by a government
to identify an officially registered vehicle.”13

“plate” with the most relevant definition: “a license plate.”14

6 U.S. Patent No. 8737915B2, September 3, 2014 Response pp. 12-13.
7 U.S. Patent No. 8737915B2 September 3, 2014 Response pp. 12-13.
8 July 21, 2016 Office Action p. 46.
9 14 TTABVUE 22.
10 March 4, 2014 Office Action p. 71.
11 14 TTABVUE 21.
12 14 TTABVUE 25.
13 14 TTABVUE 23.
14 14 TTABVUE 24.
Serial No. 79131389
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The Examining Attorney also placed in the record third-party website pages.
Among these we note the following:
A website page from www.pascard.com which includes the following
statement: “RFID (Radio frequency identification) is the use of an RFID
tag applied to a transponder for the purpose of identification and
tracking using radio waves with no physical contact necessary.”15

Website pages from www.neology-rfid.com which include the following
statements: “The E-Plate. Electronic License Plate. Since its first
introduction, the physical license plate has been used to visually identify
the vehicle and verify registration status. … Incorporating passive RFID
into the plate design allows the license plate to communicate wirelessly,
eliminating the ‘line of sight’ requirement for identification.” The E-
Plate can be integrated into many other applications, including
Electronic Toll Collection … Neology’s E-Plate is challenging the way we
think of the traditional license plate. With passive RFID technology
incorporated into the plate design, the E-Plate finally connects they
physical license plate to the digital world.”16

Website pages from www.automotive-fleet.com which is titled “The
Emergence of e-Plates to Track Fleet Assets” that states: [a]n e-plate is
the same shape and size as a conventional license plate and is mounted
to a vehicle in the same way. However, each e-plate contains an
embedded tag with a unique 128 bit encrypted identification number
that is transmitted for detection by an RFID reader. This provides the
ability to identify and locate in real-time any vehicle anywhere (whether
stationary or mobile) and in any weather condition. … RFID-embedded
license plates cost 10 time [sic] more than ordinary plates. As a result,
strong support from governors and state legislatures is needed before e-
plates are tested in individual states.”17

Website pages from www.automotiveitnews.org which include the
following statement “… in an age when conventional vehicle parts from
radios to rearview are becoming smarter and connected, the standard-
issue metal license plate is still just a dumb, thin piece of metal. But
that could change with the easy and inexpensive application of RFID
tagging technology to license plates …”18

15 March 4, 2014 Office Action p. 59.
16 July 21, 2016 Office Action, pp. 2-3.
17 March 4, 2014 Office Action, pp. 63-64.
18 July 21, 2016 Office Action p. 21.
Serial No. 79131389
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A website page from secureidnews.com states that “[t]he new e-Plates
project uses active (battery powered) RFID tags embedded in the plates
to identify vehicles in real time. … Chipped Plates. The plates are the
same size as conventional plates, and are permanently fitted to the
vehicle in the same way. But each e-Plate contains an embedded tag for
detection by RFID readers. … A key benefit of the e-Plate is that the tag
provides an encrypted and secure ID code …”19

The Examining Attorney also made of record a “White Paper on the E-Plate” by
Joe Mullis and Sheshi Nyalamdugu.20 The white paper describes an e-plate as
follows:
What is an E-Plate? By now, most of us have come to understand that
the “E” in E-Plate is synonymous with electronic. We see its use in
everyday terms like e-mail, e-waste, e-commerce, and so on. For lack of
a better description, the E-Plate is simply an ‘electronic’ license plate.”21

The white paper explains that an electronic plate or E-Plate is “constructed by using
the license plate or a retro reflective layer, formed as part of the resonator, configured
to transmit signals generated by an RFID passive chip integrated with the license
plate” providing “a technology advancement that enables transmitting the license
plate identification at much greater read distances with a higher degree of
performance and reliability.” 22 The data capable of being stored in the RFID memory
of the E-Plate includes vehicle identification number, color, make, and model of the
vehicle.23

19 March 4, 2014 Office Action p. 67.
20 July 21, 2016 Office Action p. 10.
21 July 21, 2016 Office Action p. 14.
22 July 21, 2016 Office Action pp. 14-16.
23 July 21, 2016 Office Action pp. 14-16.
Serial No. 79131389
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Based on the evidence of record, we find that the term ID, an abbreviation for
identification, is merely descriptive of a function of Applicant’s license plates, encoded
tags and identity plates and tags, which includes tags with an embedded RFID (radio
frequency identification) chip, all of which serve to act as identification for a
particular vehicle. The evidence also shows that the term EPLATE, a combination of
the letter “e” prefix, (defined as “electronic”) and the term PLATE (defined as “license
plate’), is merely descriptive of an electronic license plate. See In re SPX Corp., 63
USPQ2d 1592 (TTAB 2002) (holding E-AUTODIAGNOSTICS merely descriptive of
an electronic engine analysis system comprised of a hand-held computer and related
computer software); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) (holding
E FASHION merely descriptive of software for consumer use in shopping via a global
computer network and of electronic retailing services). We find that EPLATE is
merely descriptive of a feature of Applicant’s goods which are electronic license plates,
identity plates and tags, or encoded tags for vehicle tracking that contain an
embedded RFID data chip.
It would be readily apparent to the purchasers of the identified goods that the
mark IDEPLATE consists of the term ID followed by the term EPLATE which have
been combined, particularly in view of the recognized meanings of ID and E-PLATE.
The combined term also is as descriptive as the individual terms, and prospective
purchasers of Applicant’s goods could readily perceive, without mental thought or
imagination, the merely descriptive significance of the term IDEPLATE as it pertains
to Applicant’s goods. When the proposed mark IDEPLATE is viewed in the context of
Serial No. 79131389
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Applicant’s goods, the term immediately informs prospective customers of the fact
that Applicant’s license plates, identity plates and tags, and encoded tags are
electronic in that they contain a data chip or data carrier, and that the goods provide
identification information of the vehicles to which the tags or plates are affixed.
Applicant has pointed to a third party registration (Registration No. 4310718) and
an abandoned application (Serial No. 85583249) both for the mark EPLATE and
argues that “USPTO precedent allows for the registration of EPLATE without a
finding of the marks being merely descriptive,” and therefore the additional letters
in Applicant’s mark “further differentiates Applicant’s mark as non-descriptive.”24
However, each application must be considered on its own record to determine
eligibility to register. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016); see also In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics
similar to Nett Designs’ application, the PTO’s allowance of such prior registrations
does not bind the Board or this court.”). Moreover, the goods in Registration No.
4310718 do not appear to be of the same type as Applicant’s goods as the registration
identifies the Class 9 goods as cards with integrated circuits, chip cards, electronic
circuit cards, magnetically encoded chip cards, magnetically encoded credit cards,
and cards of the aforementioned types all for use in connection with financial
transactions.

24 12 TTABVUE 12. As noted in n.5, the registration and application were made of record by
the Examining Attorney. Also as stated above, the abandoned application has probative
value only to show that it was filed.
Serial No. 79131389
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Applicant also states that it is unaware of any competitor use of the term
IDEPLATE, and notes that the Examining Attorney has failed to discover any usage
by competitors of this exact term. Applicant contends that the lack of use by
competitors evidences the lack of descriptiveness of the applied-for mark. However,
the fact that Applicant may be the first and presently the only user of a merely
descriptive designation does not justify registration if the only significance conveyed
by the term is merely descriptive. See In re Nat’l Shooting Sports Found., Inc., 219
USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND
CONFERENCE held descriptive for conducting and arranging trade shows in the
hunting, shooting, and outdoor sports products field).
Accordingly, we find that Applicant’s applied-for mark IDEPLATE is merely
descriptive as used in connection with Applicant’s goods.

Decision: The refusal to register IDEPLATE under Section 2(e)(1) on the ground
of mere descriptiveness is affirmed.