Winfield Locks, Inc.

Trademark Trial and Appeal Board

Jul 14, 2000

No. 75357114 (T.T.A.B. Jul. 14, 2000)

Paper No. 10
Bottorff
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 14, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Winfield Locks, Inc.
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Serial No. 75/357,114
_______
Edgar A. Zarins for Winfield Locks, Inc.
Cheryl S. Goodman, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney)
_______
Before Simms, Quinn and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark MICROCARD, in typed form, for goods identified
as “electronic door access systems comprising recodable
machine-readable entry key, key encoder and electronic
entry lock.”1
The Trademark Examining Attorney has refused
Ser. No. 75/357,114
2

1 Serial No. 75/357,114, filed September 15, 1997. The
application is based on intent-to-use under Trademark Act Section
1(b).
Ser. No. 75/357,114
3
registration of applicant’s mark under both Trademark Act
Section 2(e)(1), 15 U.S.C. §§1052(e)(1), and Trademark Act
Section 2(d). More specifically, she has refused
registration under Trademark Act Section 2(e)(1) on the
ground that applicant’s mark, as applied to applicant’s
goods, is merely descriptive. She also has refused
registration under Trademark Act Section 2(d) on the ground
that applicant’s mark, as applied to applicant’s goods, so
resembles each of two registered marks (which are owned by
a single registrant) as to be likely to cause confusion, to
cause mistake, or to deceive.
The first registration2 cited by the Trademark
Examining Attorney as a bar to registration of applicant’s
mark under Section 2(d) is of the mark MICRO CARD for goods
identified in the registration as
electronic systems for processing and storing
data in connection with smart card
applications; namely, host computers, card
readers, customer terminals for interfacing
between a smart card and a host computer,
card connectors, access control terminals,
machine-readable cards including an imbedded
microprocessor and software for smart card
applications.

2 Registration No. 1,725,122, issued October 20, 1992.
Affidavits under Trademark Act Sections 8 and 15 accepted and
acknowledged. The registration includes a claim of acquired
distinctiveness under Trademark Act Section 2(f).
Ser. No. 75/357,114
4
The second cited registration3 is of the mark MICRO CARD
TECHNOLOGIES, INC. and design (TECHNOLOGIES, INC.
disclaimed), depicted below, for goods identified in the
registration as “electronic terminals used for processing
and storing data in conjunction with machine readable
cards, namely microcomputers, processors and information
processing connectors.”
When the three refusals were made final, applicant
filed this appeal. Applicant and the Trademark Examining
Attorney filed main briefs. Applicant did not file a reply
brief, nor did applicant request an oral hearing.
We turn first to the mere descriptiveness refusal
under Section 2(e)(1). A term is merely descriptive of
goods or services, within the meaning of Trademark Act
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. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.

3 Registration No. 1,504,673, issued September 20, 1988.
Affidavits under Trademark Act Sections 8 and 15 accepted and
acknowledged.
Ser. No. 75/357,114
5
1987), and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (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); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term 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 those goods or
services, and the possible significance that the term 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).
Applying these principles to the present case, we find
that applicant’s mark MICROCARD is merely descriptive of
applicant’s goods, inasmuch as it merely consists of the
combination of two words which, whether considered
separately or in combination, directly and immediately
describe a significant component or feature of opposer’s
electronic door access system.
Ser. No. 75/357,114
6
The Trademark Examining Attorney has presented
evidence establishing that “micro” is short for
“microprocessor.” See the dictionary evidence attached to
the initial office action. Applicant’s own web site
marketing materials, made of record by the Trademark
Examining Attorney, establish that applicant’s electronic
door access systems utilize an access key card into which a
microprocessor has been embedded. Thus, the term “micro”
immediately and directly describes this feature or
characteristic of applicant’s goods, i.e., that the goods
employ microprocessor technology. Applicant has not
contended otherwise.
Likewise, the word “card” is merely descriptive of the
“access key” component of applicant’s system. In its
marketing materials, applicant repeatedly and consistently
refers to this component as a “card,” e.g.: “…Once this new
card is inserted, the lock will no longer accept the
previously used guest MicroCard”; “The card can be
reprogrammed indefinitely”; “The front desk clerk simply
enters a few keystrokes (quick and easy) and one of the
reusable cards is programmed for a guest”; “The card
encoder is used at the front desk, mainly to program guest
cards”; “No loss of synchronization occurs between front
desk and guest room door, even if cards are made and not
Ser. No. 75/357,114
7
used. The lock always accepts the last guest card made at
the front desk for the proper guest room”; and “The maid
card or the maintenance card receives a flashing light if a
guest is in the room and the deadbolt is thrown.”
(Emphasis added.) This evidence of applicant’s own use of
the term belies its argument that CARD does not immediately
describe this component of its goods.
The mere descriptiveness of the words MICRO and CARD,
as applied to applicant’s goods, is not eliminated by their
combination into the single word MICROCARD. The composite
term directly and immediately informs purchasers and users
that applicant’s electronic door access systems utilize a
key “card” which employs a “micro” or microprocessor. The
combination of these two merely descriptive words does not
result in a composite term which creates a new, unusual or
incongruous commercial impression. The composite term is
as lacking in inherent distinctiveness as the two words are
when considered separately.
Applicant argues that it is seeking to register the
mark for an entire electronic door access system, not just
for the key card component. However, as noted above, the
Section 2(e)(1) refusal is appropriate if the mark merely
describes one significant feature or component of the
goods; it need not describe all features or components of
Ser. No. 75/357,114
8
the goods. The key card with embedded microprocessor
certainly is a significant, indeed crucial, component of
applicant’s system, and because MICROCARD is merely
descriptive of that component, it also is merely
descriptive of the goods identified in the application, for
purposes of Section 2(e)(1).
For the reasons set forth above, we affirm the
Trademark Examining Attorney’s mere descriptiveness refusal
under Trademark Act Section 2(e)(1).
We turn next to the Section 2(d) refusals issued by
the Trademark Examining Attorney. Our likelihood of
confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Applicant’s mark MICROCARD is essentially identical to
MICRO CARD, the mark registered in Registration No.
1,725,122, and it is highly similar to MICRO CARD
Ser. No. 75/357,114
9
TECHNOLOGIES, INC. and design, the mark registered in
Registration No. 1,504,673. Applicant has never contended
otherwise. Neither the presence in the latter registered
mark of the design element and the disclaimed and
descriptive words TECHNOLOGIES, INC. nor the space between
the words MICRO and CARD in each of the registered marks
suffice to distinguish applicant’s mark from the respective
registered marks, for purposes of our likelihood of
confusion analysis. Thus, the first du Pont evidentiary
factor weighs significantly in favor of a finding of
likelihood of confusion in this case.
We next must consider the similarity and commercial
relationship between applicant’s goods, as identified in
the application, and the goods identified in the cited
registrations. It is not necessary that these respective
goods be identical or even competitive in order to support
a finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association or connection
Ser. No. 75/357,114
10
between the producers of the respective goods. See In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). Moreover, the greater the degree of
similarity between the parties’ marks, the lesser the
degree of similarity between the parties’ respective goods
that is required to support a finding of likelihood of
confusion, and where the parties’ marks are essentially
identical, there need be only a viable relationship between
their respective goods in order to find that a likelihood
of confusion exists. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Finally, our determination must be based on a comparison of
the goods as they are identified in the application and in
the cited registrations, rather than on the basis of any
actual limitations or restrictions to the goods as actually
used in commerce by applicant or registrant. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Applying these principles to the present case, we find
that applicant’s goods are sufficiently similar to the
goods identified in the cited registrations that confusion
is likely to result from the contemporaneous use thereon of
Ser. No. 75/357,114
11
the identical and/or highly similar marks involved in this
case.
Regarding Registration No. 1,725,122, we agree with
the Trademark Examining Attorney’s contention that
applicant’s goods, i.e., “electronic door access systems
comprising recodable machine-readable entry key, key
encoder and electronic entry lock,” are encompassed within,
and a species of, the goods identified in the registration,
i.e.:
electronic systems for processing and storing
data in connection with smart card
applications; namely, host computers, card
readers, customer terminals for interfacing
between a smart card and a host computer,
card connectors, access control terminals,
machine-readable cards including an imbedded
microprocessor and software for smart card
applications.
The particular components of applicant’s system are
included in this registration’s identification of goods.
Applicant’s “recodable machine-readable entry key” is
essentially a “machine-readable card[] including an
imbedded microprocessor.” Applicant argues that its “key”
is not a “card,” but we reject that argument for the
reasons discussed above in connection with the Section
2(e)(1) refusal. Similarly, applicant’s “key encoder,”
which, according to applicant’s advertising materials, is
Ser. No. 75/357,114
12
used to reprogram the key cards so as to deny hotel room
access to unauthorized persons, can be deemed to be,
essentially, an “access control terminal.” Applicant’s
“electronic entry lock” is essentially a “card reader”
which scans the encoded key card and either admits or
denies access to the room, as appropriate.
In addition to the similarity of the various
components of applicant’s system to the components of the
system identified in the registration, applicant’s
“electronic door access systems,” as a whole, can
reasonably be deemed to be a species of registrant’s
“electronic systems for processing and storing data in
connection with smart card applications…” Applicant’s
advertisements reveal that applicant’s system processes and
stores data, such as the currently encoded access number
for a particular hotel room and a record of the last forty
entries into a particular hotel room. We also find that
applicant’s electronic door access system is or may be a
“smart card application” within the meaning of registrant’s
identification of goods.
In this regard, the Trademark Examining Attorney has
submitted a dictionary definition of “smart card” which
defines the term as “a plastic card the size of a credit
card that has an embedded microprocessor for storing
Ser. No. 75/357,114
13
information, used for banking, medical alerts, etc. It is
used by inserting it into a reading device which is
connected with a main computer.” Similarly, it appears
from the record that a “smart card” is a card that, instead
of utilizing a magnetic stripe, contains a microchip in
which information can be stored and processed, and that
these cards are used in many different applications, both
financial and nonfinancial. And, of particular relevance
to the present case, it appears from the record that such
“smart card” applications can include building security and
access systems, in which relevant authorization data is
stored on a card which is scanned by a card reader to
determine whether building access is allowed or denied.4
Thus, applicant’s goods are encompassed within, and
accordingly are legally identical to, the goods identified

4 We acknowledge that, to the extent that a “smart card” has been
referred to as being in the size and shape of a credit card, it
appears from applicant’s advertising materials that applicant’s
access key cards may not be “smart cards,” because they are not
in the shape and size of a credit card. Conversely, however,
applicant’s key cards, like smart cards, operate by means of an
embedded microprocessor chip rather than a magnetic stripe.
However, even assuming that applicant’s system does not presently
use smart card technology, applicant’s identification of goods is
sufficiently broad to encompass a system which uses such
technology. Applicant would be entitled, under its current
identification of goods, to market an electronic door access
system which comprises a “smart card application.” It is that
identification of goods which is determinative in our likelihood
of confusion analysis, not applicant’s actual goods as they
presently are configured. See Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, supra.
Ser. No. 75/357,114
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in Registration No. 1,725,122. That is, “electronic
systems for processing and storing data in connection with
smart card applications…” would include “electronic door
access systems,” for purposes of our likelihood of
confusion analysis. Moreover, neither registrant’s nor
applicant’s identification of goods is limited in any way
as to trade channels or classes of customers, and we
accordingly presume that each parties’ goods move in all
normal trade channels and are marketed to all normal
classes of customers for such goods. See In re Elbaum, 211
USPQ 639 (TTAB 1981). To the extent that applicant’s
goods are legally identical to registrant’s goods,
applicant’s and registrant’s respective trade channels and
classes of customers also must be deemed to be the same.
We likewise find that applicant’s goods are closely
related, if not legally identical, to the goods identified
in the second cited registration, Registration No.
1,504,673, i.e., “electronic terminals used for processing
and storing data in conjunction with machine readable
cards, namely microcomputers, processors and information
processing connectors.” It is apparent from applicant’s
literature that applicant’s “electronic door access system”
includes components, i.e., the “key encoder” and the
“electronic entry lock,” which, like the “electronic
Ser. No. 75/357,114
15
terminals” identified in the registration, are “used for
processing and storing data in conjunction with machine
readable cards.”
In summary, we find that applicant’s goods are closely
related to, indeed legally identical to, the goods
identified in each of the cited registrations, and that
applicant’s and registrant’s respective goods must be
presumed to be marketed in the same trade channels and to
the same classes of customers. These du Pont factors weigh
in favor of a finding of likelihood of confusion in this
case.
Having carefully considered all of the evidence of
record with respect to the relevant du Pont factors, we
conclude that a likelihood of confusion exists as between
applicant’s mark, as applied to applicant’s goods, and the
marks and goods set forth in the registrations cited by the
Trademark Examining Attorney, i.e., Registration Nos.
1,725,122 and 1,504,673. Accordingly, we affirm each of
Ser. No. 75/357,114
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the Trademark Examining Attorney’s Section 2(d) refusals.
Decision: The refusal to register under Section
2(e)(1) and the two refusals to register under Section 2(d)
are all affirmed.
R. L. Simms
T. J. Quinn
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board