Utimaco Safeware AG

Trademark Trial and Appeal Board

May 11, 2007

No. 79009136 (T.T.A.B. May. 11, 2007)

Mailed:
May 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Utimaco Safeware AG
________

Serial No. 79009136
_______

Stewart J. Bellus of Collard & Roe, P.C. for Utimaco
Safeware AG.

Maria-Victoria Suarez, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Bucher, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Utimaco Safeware AG filed an application to register
the mark SAFE GUARD, in standard character format, for
goods ultimately identified as “computer hardware and
peripherals, and computer programs for protecting access
and encrypting data on PCs and client-service systems.”1
Registration was refused under Section 2(e)(1) of the
Lanham Act, 15 U.S.C. §1052(e)(1), on the ground that the

1 Application Serial No. 79009136, filed December 27, 2004 under
the provisions of Section 66(a) of the Lanham Act, 15 U.S.C.
§1141f(a).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 79009136
2
mark SAFE GUARD when used in connection with “computer
hardware and peripherals, and computer programs for
protecting access and encrypting data on PCs and client-
service systems” is merely descriptive. When the refusal
was made final, applicant appealed. Applicant and the
examining attorney filed briefs. We affirm the refusal.
The examining attorney contends that the mark SAFE
GUARD is merely descriptive because it describes the
function or purpose of applicant’s computer equipment and
software: that is, “[T]he logical and immediately apparent
meaning of applicant’s mark is that the applicant’s
computer equipment and programs protect data on PC’s and
client/server systems.” (First Trademark Office Action).
The examining attorney relies on the following evidence to
support the descriptiveness refusal:
1. The definition of “safeguard” as “one that serves
as protection or a guard.” The American
Dictionary of the English Language (4th ed. 2000);

2. An excerpt from applicant’s website (utimaco.com)
regarding “the data security solutions” offered
by applicant. In the relevant excerpt, applicant
provided a table with three columns: (i) “Your
computer security/IT security need”; (ii) “The
technical solution”; and (iii) “Our solution/Our
product.” In the first column, “Your computer
security/IT security need,” applicant stated the
following: “Protect confidential data in
networks, on file server, hard drives and mobile
storage media and devices and safeguard access.”;
and,
Serial No. 79009136
3
3. Excerpts from the following websites using the
word “safeguard” for keeping computer systems
secure:

A. “VPN software aims to safeguard handheld
devices,” an article by Tim Greene from
Network World (February 19, 2001) appearing
in wireless.itworld.com. The subject of the
article is developing secure communications
between wireless PDAs and computer networks;

B. A promotion for Max PC Safe 6.1 encryption
software at gold-software.com. The software
will “[p]rotect files from theft, privacy,
breaches and data losses, hide files from
kids, friends and co-workers, safeguard them
from Viruses, Trojans, Worms and Spyware,
secures from network computers, cable users
and hackers by just changing file
extension.” Also, “Safeguard” was one of
the keywords for the website;

C. “Want to really safeguard your data backups?
Encrypt them,” an article by Gabriel
Ferreira (September 19, 2005) on the
Computerworld Storage Networking World
Online website at snwonline.com, “the online
storage networking magazine for IT leaders.”
As indicated by the title, the subject of
this article is encrypting data to prevent
computer security breaches. The article
cites a Federal Trade Commission case
against BJ’s Wholesale Club for “failing to
take adequate measures to safeguard
sensitive customer information.”;

D. A review of the Kingston 2GB DataTraveler
Elite AES-128 Encrypted USB Drive encryption
processor appearing in the PCStats website
at pcstats.com. The review has the
following quotation: “Encryption is one way
data can be maintained in a relatively
secure format on any portable storage
medium, but there are complexities with
choosing the appropriate software and being
diligent in its use. That’s not to say
running a small software encryption program
Serial No. 79009136
4
to safeguard data on your USB flash drive is
difficult, it’s just that it makes moving
data between the computer and device time
consuming.”

In responding to the descriptiveness refusal,
applicant submitted copies of thirty-one (31) registrations
comprising the words “Safe” and/or “Guard” for various
products. These registrations do not contain a disclaimer
of either “Safe” or “Guard” and they are not registered
under the provisions of Section 2(f).2 Applicant contends
that these registrations show that “the fact that the term
SAFE GUARD refers to something that serves as protection
does not mean that the term SAFE GUARD is descriptive of
computer hardware and peripherals and computer software to
protect data on personal computers and client service
systems.” (Applicant’s May 2, 2006 Request for
Reconsideration, p. 2). Listed below are representative
registrations:
Reg.
No.
Mark Goods/Services
3074756 AIG FRAUD
SAFEGUARD
Insurance underwriting services,
namely, for fraud, embezzlement, and
theft insurance
2629167 SAFEGUARD
SECURE
Bank checks
2446272 SAFEGUARD Medical specimen bags

2 Registration No. 3,030,855 for the mark SAFE SEARCH for
“computer searching services” was registered on the Supplemental
Register.
Serial No. 79009136
5

Reg.
No.
Mark Goods/Services
2299429 SAFEGUARD Collection systems for use in drilling oil
and gas wells for the collection,
transportation, storage and separation of
solid wastes, the reclamation and recycling
of drilling fluids and the cleaning of
pits, sand traps and vessels
2439785 SAFEGUARD Oil and gas well treatment and waste
treatment
2711608 SAFEGUARD School bus seat with restraint
2084147 SAFE-
GUARD
TURF
Rubber granulated surfaces primarily used
for playgrounds and child care centers
1633193 SAFGUARDS Plastic bags, namely protective document
covers
1527732 SAFE-
GUARD
Dewormer for animals
867044 SAFE T
GARD
Toilet seat covers

A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is
whether someone who knows what the goods are will
Serial No. 79009136
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understand the mark to convey information about the
products. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
1990); In re American Greetings Corp., 226 UPSQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Finally, in determining whether a mark is merely
descriptive, we must consider the mark in its entirety. As
argued by applicant, common words may be descriptive when
standing alone, but when used together in a composite mark,
they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054, 1057 (TTAB 1989).
Thus, we start our analysis by inquiring whether
applicant’s mark - - SAFE GUARD - - describes a function or
Serial No. 79009136
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purpose of “computer hardware and peripherals, and computer
programs for protecting access and encrypting data on PCs
and client-service systems,” not whether we can guess what
the products are by looking at the mark. “Safeguard” is a
single word defined in the dictionary definition of record
as “one that serves as protection or a guard.” It is not a
combination of two descriptive terms put together to form a
new or incongruous term. The slight variation between
applicant’s mark SAFE GUARD and the defined term
“Safeguard” does not change the meaning of applicant’s
mark. In re Vanilla Gorilla L.P., 80 USPQ2d 1637, 1639
(TTAB 2006), quoting Standard Paint Co. v. Trinidad Asphalt
Mfg. Co., 220 US 446, 455 (1911)(“The word, therefore is
descriptive . . . and being of that quality, we cannot
admit that it loses such quality and becomes arbitrary by
being misspelled. Bad orthography has not yet become so
rare or so easily detected as to make a word the arbitrary
sign of something else other than its conventional
meaning”). Thus, there is no significant difference
between SAFE GUARD and “Safeguard.”
Applicant uses the mark in connection with “computer
hardware and peripherals, and computer programs for
protecting access and encrypting data on PCs and client-
Serial No. 79009136
8
service systems.”3 Applicant’s hardware and software blocks
access to and protects data on computers and computer
networks. In other words, it “safeguards” that data.
Applicant uses “safeguard” in its website to describe the
purpose of its “SafeGuard PrivateDisk”:
Protect confidential data in networks,
on file server, hard drives and mobile
storage media and devices and safeguard
access. (Emphasis added).

As indicated above, the examining attorney submitted four
(4) other websites evidencing the use of the word
“Safeguard” in connection with protecting access to
computer data and networks. In view of the foregoing, we
find that SAFEGUARD directly conveys the purpose of
applicant’s hardware and software without the need to
resort to the exercise of mature thought or a multi-stage
reasoning process.
Applicant argues that the Board should reverse the
final refusal that SAFE GUARD is merely descriptive for the
following reasons:
1. ”All doubt must be resolved in Applicant’s
favor.” (Applicant’s Brief, p. 2). However, as indicated

3 Although the application was filed under Section 66(a) of the
Lanham Act, applicant states it will continue using its mark
whether or not it obtains a registration. Applicant’s Brief, p.
5.
Serial No. 79009136
9
above, we do not have any doubt that SAFE GUARD is merely
descriptive;
2. “The import of the phrase SAFE GUARD cannot be
grasped without some measure of mental pause.”
(Applicant’s Brief, p. 2). In support of this argument,
applicant points to the registrations it submitted
containing the words “Safe” and/or “Guard” as evidence that
SAFE GUARD is not merely descriptive. (Applicant’s Brief,
p. 3). As indicated supra, SAFE GUARD directly conveys the
purpose of applicant’s products. Applicant itself
identifies the necessity to “safeguard access” as a
security/IT need. Moreover, applicant has not explained
what multi-step reasoning consumers or potential consumers
necessarily would follow in concluding that SAFE GUARD
describes a feature of applicant’s goods. Moreover, the
previously registered trademarks submitted by applicant do
not compel a different result. It is well established that
each case involving a trademark must stand on its own facts
and that prior decisions are of little value, especially in
the case of registrations where we do not have a complete
prosecution history before us. In re Quik-Print Copy Shop,
Inc., 616 F.2d 523, 205 USPQ 505, 507 n.8 (CCPA 1980); In
re Scholastic Testing Service, Inc., 196 USPQ 517, 519
(TTAB 1977)(“Each case must stand on its own merits and a
Serial No. 79009136
10
mark which is merely descriptive should not be registered
merely because other such marks appear on the register”).
The Board must determine the issue of descriptiveness on
the record before it. The allowance of prior registrations
with similar characteristics to SAFE GUARD is not binding
on the Board. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). In any event, we note
that none of the third-party registrations are for computer
hardware, peripherals, or software for protecting access to
data;
3. “The examiner should analyze each mark as a
whole, and not dissect the mark.” (Applicant’s Brief, p.
2). Contrary to applicant’s contention, the examining
attorney analyzed applicant’s mark as the equivalent of the
word “Safeguard” and did not dissect it into its component
parts;
4. “There is no competitive need to use the words
SAFE GUARD.” (Applicant’s Brief, p. 2). Applicant argues,
in essence, that the examining attorney did not prove that
SAFE GUARD is merely descriptive because there is no
evidence that SAFE GUARD is used descriptively and there is
no evidence that SAFE GUARD is commonly used in the trade
to describe computer hardware and software. (Applicant’s
Brief, p. 4). First, to the extent that applicant is
Serial No. 79009136
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arguing that its mark SAFE GUARD is different than the word
“Safeguard,” we have determined supra that the two terms
are legally equivalent. Second, a “competitive need” is
not necessary before a term may be found to be merely
descriptive. The fact that applicant may be the first and
possibly the only user in its field of endeavor of the term
sought to be registered does not justify registration
because the only significance conveyed by SAFE GUARD is
merely descriptive. In re Pharmaceutical Innovations,
Inc., 217 USPQ 365, 367 (TTAB 1983); In re Cosmetic
Factory, 208 USPQ 443, 447 (TTAB 1980). Moreover, the
examining attorney, in fact, submitted evidence showing use
of the word “Safeguard” to describe the purpose of software
and hardware to protect computers and computer networks;
and,
5. “The Register should reflect actual use.”
(Applicant’s Brief, p. 2). Applicant contends that even if
SAFE GUARD is not registered, applicant will continue using
it. Because the purpose of trademark register is to
encourage the registration of marks that are in use, SAFE
GUARD should be registered. (Applicants Brief, p. 5).
Essentially, applicant is arguing that we should eliminate
the ex parte examination of use based trademark
applications because marks that are in use should be
Serial No. 79009136
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registered. That is not the system under which we operate,
and therefore an application for a mark that is merely
descriptive, whether based on use or intent to use, will be
refused registration.
In view of the foregoing, we find that SAFE GUARD is
the equivalent of “Safeguard,” a word that means to
protect, and that the mark is merely descriptive of the
purpose of applicant’s hardware and software for protecting
access to data on PCs and client-service systems.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is affirmed.