Photoflex, Inc.

Trademark Trial and Appeal Board

Jul 3, 2002

No. 76038839 (T.T.A.B. Jul. 3, 2002)

7/3/02 Paper No. 8
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Photoflex, Inc.
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Serial No. 76/038,839
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Michael J. Hughes for Photoflex, Inc.

Michael E. Hall, Trademark Examining Attorney, Law Office
105 (Thomas J. Howell, Managing Attorney).
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Before Hanak, Hairston and Wendel, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Photoflex, Inc. (applicant) seeks to register
ECAMERABAGS in typed drawing form for “on-line retail
outlet for photographic cases and parts therefor.” The
application was filed on May 2, 2002 with a claimed first
use date of July 31, 1999.
The Examining Attorney has refused registration on the
basis that applicant’s mark, as applied to applicant’s
services, is merely descriptive pursuant to Section 2(e)(1)
of the Trademark Act. When the refusal to register was

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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made final, applicant appealed to this Board. Applicant
and the Examining Attorney filed briefs. Applicant did not
request a hearing.
A mark is merely descriptive pursuant to Section
2(e)(1) of the Trademark Act if it immediately conveys
information about a significant quality or characteristic
of applicant’s goods or services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986).
In determining whether a mark is merely descriptive of the
services for which registration is sought, two important
propositions must be kept in mind. First, the mere
descriptiveness of a mark is not determined in the
abstract, but rather is determined in relation to the
services for which registration is sought. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978). Second, in order to be held merely descriptive, a
mark need not immediately convey information about all of
the significant qualities or characteristics of the
services for which registration is sought. A term is
merely descriptive if it immediately conveys information

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about “one of the qualities” of the services for which
registration is sought. Gyulay, 3 USPQ2d at 1010.
At page 3 of its brief, applicant makes the following
statements:
While the words “camera” and “bags,” as well as the
term “e” representing “electronic,” used individually
have dictionary meanings which are well known and
well understood by the purchasing public, when
combined, they function as more than a mere
description of the ingredients (or characteristics)
of the services upon which the mark is used and are
thus not “merely descriptive” of such services within
the meaning of Section 2. (emphasis added).

In support of its contention that the combined term
ECAMERABAGS is not descriptive for “on-line retail outlet
for photographic cases and parts therefor,” applicant cites
In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 352
(CCPA 1968) where the Court held that the mark SUGAR &
SPICE was not merely descriptive of bakery goods because it
also brought to mind a well known nursery rhyme. However,
in this case, applicant at no time has indicated how its
purported mark ECAMERBAGS has a second meaning like the
mark SUGAR & SPICE. Obviously, the term “camerabag” is
synonymous with the term “photographic cases,” the goods
which are the subject of applicant’s on-line retail outlet
services. In this regard, we note that in applicant’s
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specimen of use applicant uses the term “camerabags” in a
descriptive if not generic manner as exemplified by the
following sentence: “ecamerabags are the highest quality
camerabags in the world today.”
In addition, as previously noted, applicant has
conceded at page 3 of its brief that “the term ‘e’
representing ‘electronic’ … [is] well known and well
understood by the purchasing public.” In light of the
foregoing, we find that prospective consumers viewing
applicant’s purported mark ECAMERABAGS not in the abstract,
but rather in connection with “on-line retail outlet for
photographic cases and parts therefor” would readily
understand that applicant’s camerabags (photographic cases)
could be purchased electronically via the Internet.
Three final comments are in order. First, at page 3
of its brief applicant argues that “the descriptive nature
of the mark [ECAMERABAGS] is for goods, not services.”
Professor McCarthy refutes applicant’s argument when he
states that a term is “descriptive of retail sales services
if it is the generic name of a product sold at that
outlet.” 2 J. McCarthy, McCarthy on Trademarks and Unfair
Competition Section 11:16 at page 11-22 (4th ed. 2001).
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Serial No. 76/038,839

Quite recently, this Board had the occasion to deal with
this very principle when it found the mark E FASHION to be
merely descriptive not only for goods, but also for the
services of “electronic retailing services via a global
computer network featuring apparel, fashion, accessories,
personal care items, jewelry and cosmetics.” In re
Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000).
Second, applicant has made of record third-party
registrations for the marks CAMERAWORLD.COM; CARDIOCAMERA;
and PARACAMERA. Applicant then makes the argument at page
4 of its brief that “all [three] of these marks contain
words that describe the goods and services used, and each
Examining Attorney found the respective marks at least one
step removed from being descriptive.” Our response to
applicant’s argument is two-fold. First, this Board is not
privy to the application history of these three prior
registrations. Second, in any event, this Board is
certainly not bound by the actions by Examining Attorneys.
As an aside, we note that at least certain of these three
registered marks, such as CAMERAWORLD.COM, have an element
in them (namely, WORLD) which would arguably cause the mark
in its entirety to be not merely descriptive.
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Third, the fact that, as noted by applicant at page 5
of its brief, the term ECAMERABAGS does not appear in any
dictionary does not preclude a finding that this term is
merely descriptive of applicant’s services.
Decision: The refusal to register is affirmed.