Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Applicant SICPA Holding SA ran into double trouble when it applied to register the mark SHIFTMAG for "security consulting in the nature of professional consulting on magnetic stripe color shifting smart designs based on liquid crystal technology for visual card authentication, embed protection and brand identity customization.” In a dubiously precedential opinion, the Board agreed with Examining Attorney Brian Pino that SICPA's recitation of services was fatally indefinite, and the Board also upheld a second refusal based on SICPA's failure to respond timely and adequately to a Rule 2.61(b) request for information. In re SICPA Holding SA, 2021 USPQ2d 613 (TTAB 2021) [precedential] (Opinion by Judge Michael B. Adlin).

Indefiniteness: Examining Attorney Pino maintained that, because of the indefiniteness of the recitation of services, they cannot be properly classified. SICPA argued that it is a "one-of-a-kind business entity," that the services it offers are "not in the ID Manual," and that "[n]ot everything in the world is in the ID Manual." 

The Board sided with the USPTO, observing that specificity is required "to provide public notice and to enable the USPTO to classify the goods and services properly ...." In re Fiat Grp Mktg. & Corp. Commc’ns. S.p.A.A., 109 USPQ2d 1593, 1597 (TTAB 2014). Moreover, "[i]t is within the discretion of the PTO to require than one's goods be identified with particularity." In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980)).

In In re Omega, the CAFC upheld a requirement that the term "chronographs" be identified more specifically because the term could refer to "watches" in class 14 or to time recording instruments in class 9. Similarly, here the term "security" in SICPA's recitation of services is ambiguous: "it is unclear whether the term refers to data security, as suggested by the services relating to 'card authentication and identification,' or to physical security." SICPA claimed that it "does not do data security," but that did not make the identification less ambiguous. Moreover, it was not clear from SICPA's examples of use whether it was offering a product or a product feature, rather than a service.

While Applicant’s product may very well be “one of a kind,” that does not excuse Applicant from complying with the requirement to identify its goods or services with sufficient particularity and in an understandable way. Goods and services implementing emerging technologies, by their very nature, may not to be represented in the ID Manual. Nonetheless, the Trademark Rules and decisional law require an applicant to identify its goods or services in a clear manner that permits proper classification. Applicant did not do so here, however.

Request for Information: Under Rule 2.61(b), "[t]he Office may require the applicant to furnish such information . . . as may be reasonably necessary to the proper examination of the application." "Equivocal, vague or evasive responses are unacceptable." In re AOP LLC , 107 USPQ2d 1644, 1651 (TTAB 2013). Failure to comply with a request for information is an independent ground for refusal of an application. In re Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003). 

Of the five requests made by the Examining Attorney, SICPA failed to respond to two of them until its final brief. "But that was too late."
 

The Rule’s purpose is thwarted , proceedings are unduly prolonged, and the expenditure of agency resources is needlessly increased if the information is not provided until examination is over and the application is on appeal before the Board.

And so, the Board affirmed the second refusal. 

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TTABlogger comment: What a disaster! The Board noted that, as to the information requirement, SICPA could have asked for remand to the USPTO in order to respond to the two unanswered requests.

Text Copyright John L. Welch 2021.