Valmarc Corporation

Trademark Trial and Appeal Board

Mar 5, 2012

No. 76700150 (T.T.A.B. Mar. 5, 2012)

Mailed:
March 5, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Valmarc Corporation
________

Serial No. 76700150
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Morris I. Pollack, Esq. for Valmarc Corporation.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Bucher, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Valmarc Corporation has appealed from the final
refusal of the examining attorney to register on the
Principal Register as a mark for
the following International Class 45 services:
Providing brand and source authentication
services of products to confirm to parties the
brand source for each product when offering such
products for sale or disposition to protect
against counterfeiting, tampering and diversion
during manufacture and movement through channels
of trade in commerce, e-commerce and other
transactions, all via the allocation of a unique
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76700150
2
identifier for each article in addition to
providing consulting services related thereto.”1

The examining attorney finally refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that, when used in connection
with applicant’s services, would
be merely descriptive of such services.
After the examining attorney issued a final action,
applicant filed an appeal and a request for
reconsideration. The examining attorney denied the request
for reconsideration, and subsequently both applicant and
the examining attorney filed briefs. We affirm the refusal
to register.
In addition to dictionary definitions of
“authentication” and “source,” the examining attorney
introduced into the record in support of his refusal to
register Internet pages which use these terms in the
context of anti-counterfeiting and product authentication
services. See evidence from the September 22, 2010 final
Office action, including:
http://www.product-
authentication.com/index.php/programme.html
“Product Authentication + Security Program,”
stating: “Frequently companies manage product

1 Application Serial No. 76700150 was filed on October 30, 2009,
based on applicant’s assertion of its bona fide intention to use
the mark in commerce.
Serial No. 76700150
3
security with reactionary tactics and seldom
integrate it into company strategy marketing
plans, or distribution plans. … Common reactions
[i]nclude the immediate use of authentication and
track and trace systems which, as many have
experience[d], can be expensive and time
consuming tools aimed at resolving what may be an
unknown source.

http://www.pmpnews.com/article/pending-anti-
counterfeiting-legislation-makes-investment-
serialization-technology-imperative
“Pending Anti-Counterfeiting Legislation Makes
Investment in Serialization Technology
Imperative,” stating: “Authentication is the
ability to verify that a drug product genuinely
came from the manufacturer or other legalized
source.”

http://www.faqs.org/patents/app/20090040023
Patent application for an “RF Transponder for
Off-Line Authentication of a Source of a Product
Carrying the Transponder.”

http://tracelink.com/product-tracking-for-
product-security-patient-safety
“Product Tracking and Authentication,” stating
that a benefit of the provider’s capabilities is
to increase product security by providing product
authentication services by “captur[ing] the
source of failed authentication attempts of
unauthorized product in the channel.”

http://osdir.com/patents/Record-receiver/Product-
authentication-06939826.html
A patent abstract for an invention entitled
“Product authentication” which claims, “an
authentication system adapted to affirm
authenticity of source of said data storage
device” (Claim 1); and referring multiple times
to “product source authentication,” e.g., “Also
for product source authentication, it is known to
provide various identification indicia on the
packaging which contains the good.”
(“Background” of invention, ¶9)

Serial No. 76700150
4
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. 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 (CCPA 1978). A term 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; it is enough that the term
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).
We find that is merely
descriptive of a feature of applicant’s services.
Applicant’s recitation of services recites that applicant
provides “brand and source authentication services of
products to confirm to parties the brand source for each
product….” Applicant is authenticating a product’s source
as part of its services, that is, it provides
authentication as to the source of a product. The Internet
evidence in the record confirms that the terms
“authentication” and “source” are used in the context of
Serial No. 76700150
5
determining a brand’s source in the context of
counterfeiting, tampering or diversion of goods.
“Authentication to source” succinctly, and without
imagination or pause, identifies a feature of applicant’s
services.
Applicant’s entire argument against the refusal is,
“The Identification of Services, as stated is directed to
brand and source of products. It is not just to any
source, such as the USPTO source of trademark listings or
the listings of the source of manufacturers, or libraries,
or the like. As such, it is not merely descriptive ….”
Brief at 2. Applicant’s argument is not well taken;
“source” as it appears in the proposed mark encompasses
both brand source and the producer (or “source”) of the
goods. Also, it is not necessary that a term describe all
of the purposes, functions, characteristics, or features of
a product to be considered merely descriptive; it is enough
if the term describes one significant function, attribute,
or property. In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370 (Fed. Cir. 2004).
Decision: The refusal to register is affirmed.