MAPFRE U.S.A. Corp.

Trademark Trial and Appeal Board

Apr 12, 2016

No. 85849319 (T.T.A.B. Apr. 12, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MAPFRE U.S.A. Corp.
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Serial Nos. 85849319 and 85849329
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Clinton G. Newton of Shook, Hardy & Bacon L.L.P. for MAPFRE U.S.A. Corp.

Sara N. Benjamin, Trademark Examining Attorney, Law Office 110, Chris A.F.
Pedersen, Managing Attorney.
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Before Cataldo, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
MAPFRE U.S.A. Corp. (“Applicant”) seeks Principal Register registrations for the
mark ePICS, in standard characters and the form shown below

Serial Nos. 85849319 and 85849329
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for “Insurance services, namely, appraisal of damaged automobiles and vehicles for
repairs featuring e-mail submission by insureds directly to an insurance company,
appraiser or adjuster, and not to an insurance agent or broker, of photographs of
damaged automobiles and vehicles in connection with appraisals for insurance claims
of automobiles and vehicles.”1 Because she found that the term ePICS is merely
descriptive of Applicant’s services, the Examining Attorney refused registration of
the standard character mark in the ‘319 Application under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), and refused registration of the design mark
in the ‘329 Application absent a disclaimer of the term ePICS. After the refusals
became final, Applicant appealed and filed a motion for reconsideration in the ‘319
Application which was denied. Applicant and the Examining Attorney filed briefs.2
Appeals Consolidated
These appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we consolidate and decide both appeals in this

1 Application Serial Nos. 85849319 (the “‘319 Application”) and 85849329 (the “‘329
Application”), respectively, each filed February 13, 2013. The ‘319 Application alleges first
use on May 3, 2012, the ‘329 Application alleges first use on October 4, 2012, and both
applications are based on first use in commerce on October 24, 2012. The ‘329 Application
includes this description of Applicant’s design mark: “The mark consists of a lower case letter
"e" followed by capital letters "PICS", with the dot above the letter "I" being a circle formed
by six triangular-shaped items.”
2 The Examining Attorney also refused both applications under Section 2(d) of the
Trademark Act based on a likelihood of confusion with several registered marks. However,
before Applicant filed its appeal, the Examining Attorney withdrew the likelihood of
confusion refusals based on some of the cited registrations, and after Applicant filed its
appeal, the Examining Attorney withdrew the likelihood of confusion refusals based on the
remaining cited registrations. Only the descriptiveness refusal and disclaimer requirement
remain to be decided.
Serial Nos. 85849319 and 85849329
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single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214
(2015).
Descriptiveness
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the services for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009)); In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A mark need not immediately convey an idea of each and every specific
feature of the services in order to be considered merely descriptive; rather, it is
sufficient that the mark describes one significant attribute, function or property of
the services. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a mark
is merely descriptive is determined not in the abstract, but in relation to the services
for which registration is sought, the context in which it is being used on or in
connection with the services, and the possible significance that the mark would have
to the average purchaser of the services because of the manner of its use. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Under Section 6(a) of the Act, “[t]he Director may require the applicant to
disclaim an unregistrable component of a mark otherwise registrable,” such as a
component which is merely descriptive under Section 2(e)(1). Failure to comply with
Serial Nos. 85849319 and 85849329
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a disclaimer requirement is a basis for refusing registration. See In re Slokevage, 441
F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
The Examining Attorney relies on an Acronym Finder entry for “e” which indicates
that the letter stands for “electronic,” as well as an American Heritage Dictionary
definition which indicates that “pic” is slang for “a photograph” or short for “picture.”
Office Action of June 6, 2013 (http://www.acronymfinder.com/Electronic(E).html;
http://www.ahdictionary.com/word/search.html?q=pic).3 She further relies on the
following American Heritage Dictionary definitions for terms which begin with the
“e” prefix:
e-mail—“a system for sending and receiving messages electronically over a
computer network”

e-commerce—“commerce that is transacted electronically, as over the Internet”

e-book—“a book whose contents are in electronic format”

e-ticket—“a reservation, as for a seat on an airplane, for which confirmation is
granted electronically in place of a printed ticket”

e-reader—“a small, portable device onto which the contents of a book in electronic
format can be downloaded and read”

e-cash—“money available as an electronic account, used in Internet commerce”

e-signature—“a digital file attached to or associated with a contract or other
record and used as the legal equivalent of a written signature”

e-tailer—“one that sells goods or commodities to consumers electronically, as over
the Internet”

3 Citations are to the record in the ‘319 Application.
Serial Nos. 85849319 and 85849329
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Office Action of July 19, 2014. Finally, the Examining Attorney relies on Applicant’s
specimens of use, which include the following:

Applicant essentially argues that despite the definitions of record, someone
presented with the proposed mark would not necessarily understand that Applicant
offers insurance or appraisal services, and we do not disagree. But that is not the test.
“Rather, the question is whether someone who knows what the goods or services are
Serial Nos. 85849319 and 85849329
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will understand the mark to convey information about them.” In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002).
Here, Applicant’s insurance/appraisal services, according to the way Applicant
identifies them in its involved applications, “feature” the “e-mail submission” of
“photographs.” The Acronym Finder entry establishes that the “e” prefix in
Applicant’s proposed marks means, and consumers will understand, that the
“photographs” denoted by the term PICS and identified in the applications are in
electronic or digital format. In other words, ePICS describes an identified feature or
characteristic of Applicant’s insurance/appraisal services, specifically, that they
feature “e-mail submission by insureds … of photographs ….” See In re SPX Corp., 63
USPQ2d 1592 (TTAB 2002) (E-AUTODIAGNOSTICS merely descriptive of
“electronic engine analysis system comprised of a hand-held computer and related
computer software”); In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2001) (E
FASHION merely descriptive of “computer software for consumer use in shopping via
a global computer network and computer software for providing fashion, beauty and
shopping advice” and “electronic retailing services via a global computer network
featuring apparel, fashion, accessories, personal care items, jewelry and cosmetics”).
We recognize that Applicant’s standard character mark could be presented as
EPICS, which could be perceived as the plural form of the word “epic.” However, it is
not only Applicant’s design mark, and the description of Applicant’s standard
character mark which Applicant provided in that application, but also Applicant’s
specimens, such as the one reproduced above, which reveal that Applicant presents
Serial Nos. 85849319 and 85849329
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its mark not as EPICS, but instead as ePICS, such that consumers would understand
that the “e” is separate and used to denote the electronic or digital nature of the
submissions, and that PICS is also separate and used to denote photographs.
Applicant submitted the following additional specimen which further reveals this
usage:

According to this specimen, under the “ePICS Appraisal Program” insureds will be e-
mailed “a link to a web page with instructions and a video on how to take damage
photos. The email instructs the insureds how to attach photos from their cell phone,
iPad or digital camera and submit them to us. Our Inside Technical Appraisers will
receive the photos, complete the appraisal and then send it to the insureds
electronically” (emphasis added). Perhaps more importantly, the drawing of
Serial Nos. 85849319 and 85849329
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Applicant’s standard character mark which Applicant submitted with its involved
application depicts it in the same format:

And Applicant consistently depicts its mark as ePICS in its Appeal Brief, which
specifically emphasizes this point:
Applicant’s mark uses a lowercase “e” … A consumer would
understand that the “e” is separated from the rest of the
mark and is thereby to be pronounced on its own as the
letter “e” is normally pronounced, namely, é or eee. The
remainder of the mark is pronounced by itself, namely,
“pics” or “picks” or “piks.”

Applicant’s Appeal Brief at 7.4
Conclusion
Applicant is correct that we must resolve doubt in its favor. However, we have no
doubt. When insurance services featuring the e-mail submission of photographs are
known to be the services, and Applicant promotes the electronic submission of
photographs as a feature or characteristic of those services, ePICS will be
immediately recognized as describing this feature. In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). And given the obvious efficiencies and other
advantages of submitting photographs of vehicle damage electronically, Applicant’s

4 Because Applicant seeks registration of its mark in standard characters, it would be
entitled to present the word in any form, with lowercase and/or uppercase letters. See Fossil,
Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 (TTAB 1998).
Serial Nos. 85849319 and 85849329
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competitors have or may have a need to also use the term ePICS or variations thereof.
In re Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting
[merely descriptive] marks are … to maintain freedom of the public to use the
language involved, thus avoiding the possibility of harassing infringement suits by
the registrant against others who use the mark when advertising or describing their
own products.”). Accordingly, the refusal to register Applicant’s standard character
mark and the disclaimer requirement imposed on the application to register
Applicant’s design mark are both affirmed.

Decision: The refusal to register the standard character mark in the ‘319
Application is affirmed. The refusal to register the design mark in the ‘329
Application in the absence of a disclaimer of ePICS is affirmed. This decision with
respect to the ‘329 Application will be set aside if, within thirty days of the mailing
date of this order, Applicant submits to the Board a proper disclaimer of ePICS.
Trademark Rule 2.142(g). The disclaimer should be worded as follows: “No claim is
made to the exclusive right to use ePICS apart from the mark as shown.”