Gabriel Solutions, LLCDownload PDFTrademark Trial and Appeal BoardFeb 6, 2009No. 76670480 (T.T.A.B. Feb. 6, 2009) Copy Citation 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 - 2 - 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 - 3 - 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 - 4 - 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 - 5 - 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 - 6 - 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 - 7 - 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 - 8 - 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 - 9 - 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 - 10 - 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 - 11 - 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. Copy with citationCopy as parenthetical citation