1051 FM, LLC

Trademark Trial and Appeal Board

Mar 31, 2004

No. 76266486 (T.T.A.B. Mar. 31, 2004)

Mailed:
March 31, 2004
Paper No. 14
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re 1051 FM, LLC
________
Serial No. 76266486
_______
Dan J. Alpert for 1051 FM, LLC.
Ingrid C. Eulin, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Hanak, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, 1051 FM, LLC, seeks registration on the
Principal Register for the mark as shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76266486
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for “broadcasting namely radio broadcasting” in
International Class 38.1
This case is now before the Board on appeal from the
final refusal to register on the ground that the term eFM is
merely descriptive of applicant’s services under Section
2(e)(1) of the Lanham Act, 15 U.S.C. §1052(e)(1).
Both applicant and the Trademark Examining Attorney
have fully briefed the case. Applicant did not request an
oral hearing before the Board.
We affirm the refusal to register.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, if it immediately conveys information
of significant ingredients, qualities, characteristics,
features, functions, purposes or uses of the goods or
services with which it is used or is intended to be used. A
mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
1 Application Serial No. 76266486 was filed on June 5, 2001
based upon applicant’s allegation of use in commerce since at
Serial No. 76266486
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The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the mark in relation to the
services for which registration is sought, the context in
which the mark is used or is intended to be used, and the
possible significance that the mark is likely to have on the
average purchaser encountering the services in the
marketplace. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The Trademark Examining Attorney takes the position
that the letter “e” in applicant’s mark stands for
“electronic,” which is descriptive of applicant’s radio
broadcasting – especially in that the record shows this
station’s broadcast is streamed over the Internet. One of
the specimens of record, right under the presentation of the
involved special-form mark, urges listeners to “Check out
least as early as November 5, 2000.
Serial No. 76266486
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Kansas City’s coolest website: www.e1051.fm.” From this
website, one can listen to the station’s broadcast online.
Applicant admits that applicant is an over-the-air radio
station that “incidentally” recreates its signal on the
Internet.
In support of her refusal to register, the Trademark
Examining Attorney has supplied copies of various reference
works and LEXIS/NEXIS stories demonstrating that the term
“e” often means “electronic.” The dictionary evidence shows
the prefix “e-” defined as follows: “e- (Electronic-) The
‘e-dash’ prefix may be attached to anything that has moved
from paper to its electronic alternative, such as e-mail, e-
cash, etc.” The Computer Glossary (8th ed. 1998). An online
resource (http://www.acronymfinder.com) also shows, in
pertinent part, the letter “e” to be an abbreviation for the
term “electronic.” Several excerpts the Trademark Examining
Attorney retrieved from the LEXIS/NEXIS database explain
within the articles themselves that the “e-” prefix means
“electronic” in the context of online features: “e-tickets”
from the airlines, “e-coins,” “e-stamps” and “e-money” used
with “e-commerce,” “e-mail,” etc. In fact, the Trademark
Examining Attorney cites to a recent case decided by this
Board where a similar issue was presented:
Serial No. 76266486
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We have no doubt that in the year 2000, the
meaning of the “e-” prefix is commonly
recognized and understood by virtually
everyone as a designation for the Internet.
In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000).
Additionally, there is no question but that the term
FM, short for “frequency modulation,” represents the current
mainstay of broadcast radio services. Hence, the term FM is
merely descriptive, if not generic, for radio broadcasting
services.
Finally, the Trademark Examining Attorney concludes
that the combination of these two terms into the composite
term, eFM, is merely descriptive of the recited services.
On the other hand, applicant argues that the Trademark
Examining Attorney should be reversed because the letter “e”
as used by applicant in its Kansas City market is derived
from applicant’s call letters, KFME. Furthermore, applicant
makes the point that the United States Patent and Trademark
Office has registered marks like “B100FM,” “B101.1,” “Q-
101,” “Q102,” “Q104.3,” et al. Applicant points out that
its primary services are offered over-the-air and that
applicant has never used this mark directly to promote its
online streaming.
Based on the evidence provided for the record by the
Trademark Examining Attorney, we find that applicant’s
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applied-for mark, with what appears to be an “e” prefix,
refers to services available “online” and hence is devoid of
any source-indicating significance when added as a prefix to
the designation “FM”. In the context of radio broadcasting
services, placing the descriptive letter “e” in front of the
generic term “FM” does not create a distinctive composite.
Inasmuch as applicant and an ever-increasing number of
applicant’s competitors are streaming FM on the Internet,
for those listeners, applicant’s broadcasting services could
well be described as E-FM. We find this to be true under
our precedent even though the record contains no evidence
that any third-party uses the designation “eFM” to connote
an FM signal streamed online.
We acknowledge applicant’s argument that applicant has
attempted to create a brand image for itself in the Kansas
City, Missouri, market as “eFM.” Other FM stations around
the country have similarly taken a feature of their call
letters to create a distinct identifier in the local radio
broadcasting market. However, we also agree with the
Trademark Examining Attorney that applicant’s subjective
intention in deriving this particular term is irrelevant
whenever the term has another understanding when examined
under Section 2(e)(1) of the Lanham Act. If the alleged
mark is on its face merely descriptive of a feature or
Serial No. 76266486
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characteristic of the goods or services, entirely plausible
explanations for possible alternative meanings related to
applicant’s specific situation do not overcome the statutory
objection.2
Furthermore, we find that the marks in the third-party
registrations placed into the record by applicant are not
analogous to the applied-for mark.
Given its meaning for online goods and services, the
letter “e” is necessarily treated differently than the
letters, “b” or “q” (in the enumerated third-party
registration) or the letter “g” (in the hypothetical example
used repeatedly by applicant). Deriving a different result
on the issue of “mere descriptiveness” under the Trademark
Act is not unfair if indeed “e-FM” has possible significance
to the average purchaser encountering the services in the
marketplace while “g-FM” may well be seen as totally
arbitrary.
2 In making this statement, we contrast cases like the instant
appeal (i.e., where the parochial significance of the combined
term is tied to the specific facts of applicant’s adoption) with
cases of universally recognizable associations, such as the
composite mark SUGAR & SPICE being found not to be merely
descriptive of bakery products because of associations with the
nursery rhyme. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
382 (CCPA 1968) is one in a well-known line of cases finding
registrable composite marks comprising double entendres or having
incongruous meanings.
Serial No. 76266486
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Secondly, none of the third-party registrations placed
into the record by applicant consisted of a single letter
before the FM designation. Rather, each mark prominently
included numbers that are easily recognizable as specific FM
frequencies measured in megahertz on the electromagnetic
spectrum. These third-party uses are similar to composite
marks such as “e105.1 FM” or “E105” – two variations seen on
applicant’s specimens of record. Whenever applicant’s
letter “e” immediately precedes the station’s broadcasting
frequency, arguably this could well change the commercial
impression of the letter “e,” making it more likely that
prospective consumers seeing the letter “e” in that setting
would view it as nothing more than a shortened form of
applicant’s call letters.
In conclusion, we find that the designation “eFM” is
merely descriptive as applied to radio broadcasting
services.
Decision: The refusal to register this mark as merely
descriptive under Section 2(e)(1) of the Lanham Act is
hereby affirmed.