Brian L. Seifert

Trademark Trial and Appeal Board

Oct 19, 2000

No. 75273635 (T.T.A.B. Oct. 19, 2000)

THIS DEPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB 10/19/00
Paper No. 17
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Seifert
________
Serial No. 75/273,635
_______
Jack Schuman, Esq. for Brian L. Seifert.
Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______
Before Hohein, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Brian L. Seifert has filed an application to register
the term "E-CATALOG," in the stylized format reproduced below,
Ser. No. 75/273,635
2
for "computer software for use in creating an electronic
customer order catalog from which the customer may order
merchandise and services and arrange for the delivery thereof."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's goods, the
term "E-CATALOG" is merely descriptive of them.
Applicant has appealed. Briefs have been filed,2 but
an oral hearing was not requested. We affirm the refusal to
register.

1 Ser. No. 75/273,635, filed on April 14, 1997, which alleges a date of
first use anywhere of January 1989 and a date of first use in commerce
of October 20, 1994.
2 Both applicant and the Examining Attorney have devoted a significant
portion of their briefs to an issue not properly before the Board on
appeal. Specifically, citing Section 41 of the Trademark Act, 15
U.S.C. §1123, which provides that rules and regulations for the
conduct of proceedings in the Patent and Trademark Office shall not be
inconsistent with law, applicant contends that Trademark Rule 2.84(a),
under which the Commissioner granted the Examining Attorney's request
after publication for restoration of jurisdiction so as to impose the
mere descriptiveness refusal, is contrary to the provisions of Section
13(b)(1) of the Trademark Act, 15 U.S.C. §1063(b)(1), which state in
relevant part that "[u]nless registration is successfully opposed ...
a mark entitled to registration on the principal register ... shall be
registered ...." However, inasmuch as the Board does not have
jurisdiction to determine such issue, the proper recourse for
applicant would have been to file a timely petition to the
Commissioner under Trademark Rule 2.146(a). See TMEP Section 1702
("Decisions on the rules and practice are specifically outside the
province of the Trademark Trial and Appeal Board"). Accordingly, no
further consideration will be given to applicant's assertion that the
Commissioner impermissibly restored jurisdiction to the Examining
Attorney to raise the issue of mere descriptiveness.
Ser. No. 75/273,635
3
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). It is not necessary that a term describe all of
the properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute or idea about them. Moreover, 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. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Ser. No. 75/273,635
4
Applicant, referring to a third-party registration for
the mark "ECATALOG" for "computer software for generating remote
sales by providing product information and prices for goods,
such as computer software, for viewing on a personal computer
generating orders for the goods,"3 maintains that the Patent and
Trademark Office ("PTO") is being inconsistent in presently
refusing registration. Applicant, moreover, not only insists
that the Examining Attorney's basis for refusal is "patently
absurd," but contends that the PTO "is estopped now from denying
that the mark is not descriptive." Furthermore, while tellingly
avoiding any discussion of the evidence offered by the Examining
Attorney, applicant simply asserts, without any explanation,
that "the mark now sought to be registered merely suggests
applicant's business" and correctly notes that "suggestive marks
have long been held to be registrable."
The Examining Attorney, on the other hand, contends
that it is not inconsistent for the PTO to have allowed an
earlier registration for essentially the same mark and goods
"while refusing the applicant's mark at this time because
circumstances in the computer industry have vastly changed even
within the last several years." Thus, irrespective of whether

3 Such registration, which was originally cited under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), as a bar to the registration
applicant currently seeks, subsequently was voluntarily surrendered by
the registrant and has been cancelled.
Ser. No. 75/273,635
5
the term "ECATALOG" (or its legal equivalent "E-CATALOG") "may
have been newly coined and may not have been merely descriptive
of the goods" when registered, the Examining Attorney urges
that, "with the proliferation of electronic commerce, i.e.
business conducted using computers and web sites via Internet
and World Wide Web, the term has become merely descriptive as
demonstrated by the submitted evidence."
With respect to such evidence, the Examining Attorney
has made of record numerous excerpts, of which the following are
representative, from her searches of the "NEXIS" database to
show that the term "E-CATALOG" "merely describes the primary
feature of the applicant's ... goods" (emphasis added):
"Distributors are starting to offer
Web-based e-catalogs and Web storefronts
that ... allow your users to view the
products in your distributor's inventory
transparently, as if the products were your
own." -- VARBusiness, June 7, 1999;
"With the increasing use of e-mail
promotions, customers' e-mailboxes are
growing as cluttered as their physical
mailboxes. To set its e-mail apart from the
competition's, and reduce costs, in February
computer cataloger Insight Enterprises
introduced the eCatalog, an e-mail catalog
with graphics that resembles a page from its
printed catalog." -- Catalog Age, April 1,
1999;
"In the past two years, we no longer
use the [printed] catalog for prospecting.
Only existing customers that request it
receive it. We're trying to go with e-
catalogs. We'll send you the same thing via
Ser. No. 75/273,635
6
e-mail that you would get via print. And it
has Web links on it, so you can click
through to either our page or the
manufacturer's and get more information in
real time, right there." -- Investor's
Business Daily, April 1, 1999;
"This allows the developer, as well as
the viewer, to customize e-catalog pages for
the highest quality viewing and printing on
the Web." -- EDGE: Work-Group Computing
Report, February 15, 1999;
"The seminar will cover the current e-
commerce marketplace, extending a Web site
to accommodate e-commerce, identifying e-
commerce opportunities and requirements, and
setting up a Web 'storefront' using a Lotus
Domino-powered e-catalog application
developed by Sun & Son." -- Electronic
Buyers' News, September 28, 1998;
"You can imagine why businesses that
offer product catalogs to other businesses
and consumers are looking at electronic
ordering to improve customer service, save
money and speed up supply chain delivery.
E-catalogs are a necessary treatment
for the ills that plague companies selling
to other companies. ....
....
E-catalogs provide the capability for
companies to quickly order everything from
pipe fittings and restaurant glasses to
computers and office supplies." -- Supply
Chain Report, September 3, 1998;
"[T]he company's site features an e-
catalog containing products from Sager's
previously released CD-ROMs. With the e-
catalog, any user can perform parametric
searches, compare product attributes,
request samples and quotes, and place
orders." -- Electronic Buyers' News, July 6,
1998;
Ser. No. 75/273,635
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"Elcom International's second
subsidiary is a technology organization that
licenses Pecos procurement processing system
software to companies interested in creating
e-catalog and e-commerce offerings." --
VARBusiness, July 6, 1998;
"In the second phase--where most sites
are today--online transactions are all the
rage, thanks in large part to professional
off-the-shelf e-catalog software." --
Computer Shopper, July 1998;
"[T]he president of sales and marketing
for Dallas-based Paymentech Inc.'s
commercial card division ... says that the
slow development of electronic catalogs has
had an impact. 'There are just too many
suppliers out there,' he says. 'Development
of e-catalogs is key to growth, but catalogs
are only where purchasing cards were four or
five years ago.'" -- Credit Card Management,
April 1998;
"GE Information Services ... is raising
the curtains on its latest offering, a Web-
catalog service. The E-catalog targets
retailers." -- EDI News, November 24, 1997;
and
"Zimmerman also demonstrated e-
catalogs, which he called 'an interesting
embodiment of the future of catalogs.' ....
"Zimmerman showed an e-catalog from
Land's End ....
....
E-catalogs are not yet widespread ....
" -- WWD, July 9, 1996.
In addition, the Examining Attorney relies, in support
of her position, upon dictionary definitions of the prefix "e-,"
which The Computer Glossary (8th ed. 1998) at 131 lists as
meaning "(electronic-) The 'e-dash' prefix may be attached to
Ser. No. 75/273,635
8
anything that has moved from paper to its electronic
alternative, such as e-mail, e-cash, etc.," and the word
"catalog," which the electronic version of The American Heritage
Dictionary of the English Language (3d ed. 1992) defines as "a.
a list or itemized display, as of titles, course offerings, or
articles for exhibition or sale, usually including descriptive
information or illustrations. b. a publication, such as a book
or pamphlet, containing such a list or display: a catalog of
fall fashions; a seed catalog."4 The Examining Attorney also
relies, as evidence of mere descriptiveness, upon copies of
several third-party registrations, which she made of record with
the final refusal, "of marks on the Supplemental Register
containing 'e' followed by a descriptive word." The
registrations, which among other things involve such terms as
"E-RECRUIT" for "on-line personnel recruiting services," "E-FAX"
for "electronic transmission services in the nature of a
facsimile mail service," "E-PRICING" for "providing business
information services via a global computer information network
featuring pricing information" and "E-SCHOLARSHIPS" for "on-line
scholarship services," are claimed by the Examining Attorney to

4 Although such definitions were submitted for the first time with the
Examining Attorney's brief, we have considered them inasmuch as it is
settled that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
Ser. No. 75/273,635
9
"demonstrate the policy the [United States Patent and Trademark]
Office has taken with this type of marks."
In the present case, it is our view that, when used on
or in connection with applicant's "computer software for use in
creating an electronic customer order catalog from which the
customer may order merchandise and services and arrange for the
delivery thereof," the term "E-CATALOG" immediately describes,
without conjecture or speculation, a significant purpose,
function or use of such goods, namely, that they create
electronic catalogs. As the "NEXIS" excerpts plainly
demonstrate and the dictionary definitions confirm, the term "E-
CATALOG" is used to designate electronic catalogs and software
used to create such catalogs. Clearly, to customers for
applicant's goods, there is nothing in the term "E-CATALOG"
which, in the context of software designed to create electronic
customer catalogs, would be ambiguous, incongruous or
susceptible to any other plausible meaning. In addition, and
while not in themselves dispositive, the third-party
registrations of record nevertheless reflect that, with the
single exception of the now-cancelled registration relied upon
by applicant, the United States Patent and Trademark Office has
been consistent in treating, as merely descriptive, terms which

594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 75/273,635
10
consist of the prefix "e-" (signifying "electronic") and a word
descriptive of the particular services or goods for which the
term is registered.
Accordingly, because the term "E-CATALOG" conveys
forthwith a significant purpose, function or use of applicant's
"computer software for use in creating an electronic customer
order catalog from which the customer may order merchandise and
services and arrange for the delivery thereof," such term is
merely descriptive of applicant's goods within the meaning of
the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board