Gabriel Solutions, LLC

Trademark Trial and Appeal Board

Feb 6, 2009

No. 76670480 (T.T.A.B. Feb. 6, 2009)

Mailed:
February 6, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gabriel Solutions, LLC
________

Serial No. 76670480
_______

Ezra Sutton of Ezra Sutton, P.A., for Gabriel Solutions,
LLC.

Naakwama Ankrah, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Bucher, Zervas and Ritchie, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Gabriel Solutions, LLC seeks registration on the
Principal Register of the mark EHILITER (in standard character
format) for goods identified in the application as “computer
software for highlighting documents and text” in
International Class 9.1

1 Application Serial No. 76670480 was filed on December 18,
2006, and then later amended to include applicant’s allegation of
a bona fide intention to use the mark in commerce. On May 19,
2008, subsequent to the instant appeal, applicant filed an
Amendment to Allege Use, arguing that in the event that the Board
affirmed the Section 2(e)(1) refusal on the Principal Register,
then in the alternative, applicant wanted to amend its
application to the Supplemental Register. However, this
alternative has not been considered inasmuch as the applicant
did not request remand in order for the Amendment to Allege Use
to be examined. As noted in the Board’s order of July 15, 2008,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76670480
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The Trademark Examining Attorney refused registration
on the ground that the term is merely descriptive under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
Applicant argues that the Trademark Examining Attorney
has improperly dissected the mark, and has failed to meet
his burden of demonstrating that applicant’s mark is merely
descriptive; that given the misspelling, the “hiliter”
portion of the mark should be treated as arbitrary and
fanciful; that applicant’s mark as a whole is not merely
descriptive inasmuch as there is no evidence that the
term “e-highlighter” has ever been used by third
parties; and that any doubt about whether this term is
descriptive or suggestive should be resolved in favor of
applicant.
By contrast, the Trademark Examining Attorney argues
that the combination of the term “e” and “hiliter” does

had applicant requested a remand, deferred consideration of the
amendment to allege use would be undertaken only if the refusal
of registration was reversed. Given that we have now affirmed
this refusal, this case cannot now be reopened. See Trademark
Rule 2.142(g).

Serial No. 76670480
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not lend itself to any other meaning or significance other
than identifying the function of the goods, namely,
computer software for highlighting documents and text; that
purchasers would clearly perceive the misspelled “ehiliter”
as the equivalent of the descriptive term, “ehighlighter”;
and that the term “electronic highlighter” is commonly
used to describe the highlighting of electronic text.
In the face of this showing, applicant nonetheless
argues that its mark is no worse than suggestive.
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive
of analgesic product]. See also In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
[MONTANA SERIES and PHILADELPHIA CARD are merely descriptive
of applicant’s “affinity” credit card services; a “mark is
merely descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the product
or service”]; In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK
Serial No. 76670480
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is merely descriptive for bicycle racks]; In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE
PIE is merely descriptive for a potpourri mixture]; and In re
Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507
(CCPA 1980) [QUIK-PRINT is merely descriptive of same day
services of printing, photocopying, collating, binding,
cutting, drilling, folding, padding, stapling, and
perforating]. To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods. Gyulay, 3 USPQ2d at 1009. Descriptiveness of a mark
is not considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. That is, when we analyze the evidence of record, we
must keep in mind that the test is not whether prospective
purchasers can guess what applicant’s goods are after seeing
only applicant’s mark. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”; “Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute.”]. Rather, the question is whether
Serial No. 76670480
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someone who knows what the goods are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
In addition to considering the applied-for mark in
relation to the goods for which registration is sought, the
proper test for descriptiveness also considers the context
in which the mark is used and the significance that the mark
is likely to have on the average purchaser encountering the
goods or services in the marketplace. In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
Hence, the ultimate question before us is whether the
term EHILITER conveys information about a significant
feature or characteristic of applicant’s goods with the
immediacy and particularity required by the Trademark Act.
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. “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
Serial No. 76670480
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characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted) In re Gyulay, 3 USPQ2d at 1009; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
Applicant’s identification of goods is “computer
software for highlighting documents and text”, while its
mark is EHILITER (emphasis supplied). It is in this context
that the Trademark Examining Attorney placed into the record
the following definition for the term “highlighter”
highlighter
SYLLABICATION: high·light·er
NOUN: 1. A usually fluorescent marker used to mark important passages of text.
2. A cosmetic for emphasizing areas of the face, such as the eyes or
cheekbones. 2

Moreover, the record clearly shows that the letter “e-”
is an abbreviation that stands for, inter alia,
“electronic.”3 We have held on a number of different
records that the letter “E-” is frequent shorthand for the
word “electronic,” for example, within the context of the
migration of functions from paper-to-electronic media

2 http://www.bartleby.com/61/71/H0197100.html

3 http://www.acronymfinder.com/E.html and
http://dictionary.cambridge.org/define.asp?key=e*4+0&dict=A

Serial No. 76670480
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involving the Internet or computer-based applications (e.g.,
“email” or “ecommerce”).
Relying on some of these decisions, the Trademark
Examining Attorney argues that whenever the “e-” prefix
is coupled with a descriptive term for electronic goods
and/or services, then the entire mark is considered
merely descriptive under Section 2(e)(1). In re SPX
Corp., 63 USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS
merely descriptive of an “electronic engine analysis
system comprised of a hand-held computer and related
computer software”); In re Styleclick.com Inc., 57 USPQ2d
1445 (TTAB 2000) (E FASHION held merely descriptive of
software for use in shopping via global computer network and
electronic retailing services); Continental Airlines Inc.
v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999)
(E-TICKET held generic for computerized reservation and
ticketing of transportation services).
Applicant attempts to distinguish these cases by
pointing out that the terms “Autodiagnostics,” “Fashion,”
and “Ticket” all involve the correct spellings of the
clearly descriptive term in the composite. Additionally,
applicant points out that there is no evidence in the record
that anyone else in this field misspells the term
“highlighter” in this manner.
Serial No. 76670480
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On the other hand, the Trademark Examining Attorney
correctly points out that a mere misspelling is not
sufficient to traverse a Section 2(e)(1) refusal if
purchasers would perceive the different spelling as the
equivalent of the descriptive term. Andrew J. McPartland,
Inc. v. Montgomery Ward & Co., Inc., 164 F.2d 603, 76 USPQ
97 (CCPA 1947), cert. denied, 333 US 875, 77 USPQ 676
(1948) [KWIXTART, the phonetic spelling of “quick start,”
is descriptive of electric storage batteries]; In re
Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (CCPA
1953) [FASTIE, as phonetic spelling of “fast tie,” connotes
that which unites quickly, and hence the notation is
descriptive of the function and character of tube sealing
machines]; C-Thru Ruler Co. v. Needleman, 190 USPQ 93 (E.D.
Pa. 1976) (C-THRU held to be the equivalent of “see-
through” and therefore merely descriptive of transparent
rulers and drafting aids); In re Hubbard Milling Co.,
6 USPQ2d 1239 (TTAB 1987) [MINERAL-LYX held generic for
mineral licks for feeding livestock]; and In re State
Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985) [FOM,
equivalent to word “foam,” is descriptive for foam rug
shampoo].
Serial No. 76670480
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In this case, applicant seeks to register a term
EHILITER, which sounds identical to “e-highlighter” and
immediately conveys information to consumers about its
software, essentially identified as a component of an
electronic highlighter. Applicant’s “hiliter” is clearly a
misspelling of highlighter, merely leaving out the silent
“gh” sound two times in succession.
Furthermore, the Trademark Examining Attorney conducted
a Lexis search of “electronic highlighter,” uncovering
discussions of several instruments that purportedly
“highlight” text, e.g., C Pen 600 Handheld Scanner,4
QuickLink-Pen Elite,5 etc. We note that neither applicant’s
software nor these products (combinations of hardware and
software) match precisely the dictionary definition of
highlighter (#1 above) [“A usually fluorescent marker used
to mark important passages of text.”] Rather, one is able
to “highlight” text in a metaphorical sense – this is,
persons can digitally record notes quickly and easily from
printed text, or cause text to stand out on a computer
screen. For example, an advertisement from the QuickLink-

4 C-Technologies’ C-Pen 600 Handheld Scanner (See Digital
Doodads Business Today, Lexis research, accessed by the Trademark
Examining Attorney on July 31, 2008).

5 http://www.wizcomtech.com

Serial No. 76670480
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Pen analogizes the action of wanding a hand-held scanner to
the way one moves a fluorescent yellow marker over lines of
text (“Used just like a yellow highlighter …”). This
connotation fits well with definitions of the transitive
verb, “highlight,” focusing on the idea of “center[ing]
attention on,” to make more visual or more prominent, etc.6
As further support for his position that “electronic
highlighter” is a frequently-used term online, especially in
the area of data acquisition and hand-held scanning
technology, the Trademark Examining Attorney included in the
record the first summary page of hits from a Google search.
However, the number of Google hits for “electronic
highlighter,” having minimal context for the first ten
abbreviated hits, is certainly not as probative as would be
more substantial evidence of actual use of a phrase within a
particular website. See In re Fitch IBCA, Inc., 64 USPQ2d
1058, 1060 (TTAB 2002). At best, these hits constitute
evidence that the public may be exposed to the phrase
“electronic highlighter,” and the search results have
therefore been considered.

6 highlight {transitive verb} 1: to throw a strong light on
2 a: to center attention on b: to constitute a highlight
of 3 a: to mark (text) with a highlighter b: to cause
(as text or an icon) to be displayed in a way that stands
out on a computer screen.
Merriam-Webster Online Dictionary (2009). Retrieved February 3,
2009, from http://www.merriam-webster.com/dictionary/highlight
Serial No. 76670480
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Hence, even apart from the connotations of the term
“highlighter” borrowed from much less sophisticated
technologies, the combined term, “electronic highlighter”
has seemingly come to represent the given term for
electronic software and hardware, including instruments in
the nature of a handheld scanning device. Inasmuch as
applicant seeks to register the term EHILITER for software
used in conjunction with the type of goods known as
“electronic highlighters,” we find the term to be merely
descriptive.
We agree with the Trademark Examining Attorney that in
this case, no separate, non-descriptive meaning is formed
with the joining of the “e-” prefix to the misspelled term
“hiliter.” Rather, in the context of the goods for which
registration is sought, this term will be immediately
recognized as naming the goods as an “e-highlighter.” No
other new or incongruous meaning is created herein.
Decision: The Trademark Examining Attorney’s refusal
to register the term EHILITER on the ground that it is
merely descriptive of the identified goods under Section
2(e)(1) of the Lanham Act is hereby affirmed.