America Online, Inc.

Trademark Trial and Appeal Board

Jan 18, 2006

No. 75460305 (T.T.A.B. Jan. 18, 2006)

Hearing: Mailed:
16 August 2005 18 January 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re America Online, Inc.
________

Serial Nos. 75460305, 75460306, 75496386, and 75497543
_______

Michael A. Grow of Arent Fox PLLC for America Online, Inc.

Carolyn Pendleton Cataldo, Trademark Examining Attorney,
Law Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Rogers, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On 24 June 2004, the board granted applicant’s
(America Online, Inc.) motion to consolidate the appeals in
these four applications. These applications for
registration on the Principal Register all involve the term
INSTANT MESSENGER in typed (standard character) form.
Basic information about the four applications on appeal is
set out below.
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
2
I.
Serial No. 75497543
Filing date: 04 June 1998
Mark: INSTANT MESSENGER
Services:
Class 38: Telecommunications services, namely,
electronic transmission of data, images and
documents via computer terminals; electronic mail
services; and facsimile transmission
Class 39: Electronic storage of data and documents
Date of first use (both classes): 14 March 1997
Date of first use in commerce (both): 14 March 1997

II.
Serial No. 75496386
Filing date: 04 June 1998
Mark: INSTANT MESSENGER
Services:
Class 42: Computer services, namely, providing
multiple user access to computer networks and
bulletin boards and the transfer and dissemination
of a wide range of information, providing a wide
range of general interest information via computer
networks
Date of first use: 14 March 1997
Date of first use in commerce: 14 March 1997

III.
Serial No. 75460305
Filing date: 01 April 1998
Mark: AOL INSTANT MESSENGER
Services:
Class 38: Telecommunications services, namely,
electronic transmission of data, images and
documents via computer terminals; electronic mail
services; and facsimile transmission
Class 39: Electronic storage of data and documents
Date of first use (both classes): 14 March 1997
Date of first use in commerce (both): 14 March 1997
IV.
Serial No. 75460306
Filing date: 01 April 1998
Mark: AOL INSTANT MESSENGER
Services:
Class 42: Computer services, namely, providing
multiple user access to computer networks and
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
3
bulletin boards for the transfer and dissemination
of a wide range of information, providing a wide
range of general interest information via computer
networks
Date of first use: 14 March 1997
Date of first use in commerce: 14 March 1997

Issues
The issues in all four cases are basically the same:
1. Is the term INSTANT MESSENGER a generic term for the
identified services?
2. Is the term INSTANT MESSENGER merely descriptive when
used in association with the identified services?
3. If the term INSTANT MESSENGER is merely descriptive, has
applicant demonstrated that the mark has acquired
distinctiveness under Section 2(f) of the Trademark Act?
Obviously, the question in Serial Nos. 75460305 and
75460306 is whether the term INSTANT MESSENGER must be
disclaimed under the provision of Section 6 of the
Trademark Act. We add that, inasmuch as neither the
examining attorney nor applicant raised arguments
specifically attributed to the different classes in the
applications, we will not separately address each class of
services. When we refer to the record, which is largely
the same in the four cases, file references will be to the
file in Serial No. 75497543, unless we indicate otherwise.

Ser. Nos. 75460305, 75460306, 75496386, and 75497543
4
Background
After many years of prosecution, the evidence in these
applications is quite extensive. We begin by discussing
the examining attorney’s evidence that the mark is generic.
This evidence is also relevant to the other issues of
descriptiveness and acquired distinctiveness. The
examining attorney has included numerous examples from the
NEXIS database and the Internet regarding uses of the term
INSTANT MESSENGER. These uses fall into several
categories. Some appear to be generic uses of the term
INSTANT MESSENGER for similar services, as the examples
below indicate.
Nowadays, thoughts are conveyed electronically through
instant messengers and cell phones.
Macon Telegraph, 14 December 2001.

Drop superfluous programs, such as instant messengers
and screen savers, that run in the background and suck
up system resources
Washington Post, 13 December 2001.

Giving computer makers much flexibility to configure
versions of Windows operating system with applications
– such as Web browsers, instant messengers and
streaming media players.
Washington Post, 18 August 2001.

You have three E-mail accounts, two instant messengers
on your PC, a pager, a cell phone, an answering
machine and voice mail.
Orange County Register, 26 April 1998.

Fortunately, users can limit their availability to
instant messaging by setting up lists of authorized
instant messengers.
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
5
InformationWeek, 31 May 1999.

The Internet offers a variety of communication
channels: e-mail, instant messengers, Web greeting
cards.
Press Journal (Vero Beach, FL), 06 September 1999.

The more programs that are used involving the Internet
– personal finance software that electronically
interacts with a local bank or an instant messenger
program, for example – the more ports that open up on
a computer.
The Plain Dealer, 06 August 2001.

Improvements include an instant-messenger application,
the ability to beam data to and from PDAs running Palm
Inc.’s Palm OS, and Bluetooth support.
InfoWorld Daily News, 06 December 2001.

Evans students said they use e-mail, instant messenger
programs and chat rooms as many as five or six hours a
day.
Augusta Chronicle, 04 December 2001.

WordPerfect, Lotus WordPro, 1-2-3, Approach,
Organizer, instant messengers and e-mail clients.
Information Security, December 2001.

Additionally, an instant messenger feature at each
booth will allow entrepreneurs to exchange questions
and answers privately.
Tulsa World, 24 October 2001.

People in far-flung countries are chatting via instant
messenger software, posting thoughts on electronic
bulletin boards, and searching for relevant Web
journals at sites.
Washington Post, 04 October 2001.

The Internet stood out in the area of personal
communication with instant messenger services and e-
mail leading the way.
Las Vegas Review-Journal, 17 September 2001.

The whole project has been through e-mail and instant
messenger.
The Ledger (Lakeland, FL), 29 December 1998.
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
6
Other examples appear to use the term in association
with similar services but these services are apparently
provided by competitors:
At Yahoo, alerts are also available via instant
messenger, though it doesn’t always work properly.
Chicago Tribune, 03 December 2001.

Yahoo! promotes LogiTech’s QuickCam Web cams as a way
to use video capabilities of Yahoo!’s instant
messenger service.
ASAP, 01 December 2001.

Yahoo added video chats to its instant messenger
program in June.
San Francisco Chronicle, 26 September 2001.

Expedia’s involvement is in the part of the XP
platform Windows Messenger that used to be known as
Instant Messenger.
Computing, 25 October 2001.

Also bundled for the first time is Microsoft’s Instant
Messenger software.
Computing, 11 October 2001.

The two together could provide a powerful combination,
and with the use of Microsoft client interfaces –
Office XP, Microsoft Instant Messenger or a Web
browser.
Network World, 08 October 2001.

That’s the audio and video conferencing software
integrated into Microsoft’s instant messenger.
Investor’s Business Daily, 21 September 2001.

Microsoft’s Instant Messenger product was hit by an
embarrassing glitch last week.
Computing, 12 July 2001.

Microsoft Corp. said it will use technology from
Net2Phone in a new version of its instant messenger e-
mail software available this week.
The Record (Bergen County, NJ), 21 July 2000.

Ser. Nos. 75460305, 75460306, 75496386, and 75497543
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Microsoft Corp. said it will use technology from
Net2Phone in a new version of its instant messenger e-
mail software that enables Internet users to make
long-distance calls.
St. Petersburg Times, 21 July 2001.

Still other uses are equivocal because it is not clear
whether the term is being used as a generic term or as a
reference to applicant’s services, perhaps without
capitalizing the initial letter of the words:
When there was a break in the action, he sent love
notes to his wife, Rachel, by instant messenger.
New York Times, 13 December 2001.

As soon as I get back to my dorm from class, I turn on
my instant messenger.
Dayton Daily News, 11 December 2001.

She also suggested he turn off the instant messenger
when she is writing her English essays.
Hartford Courant, 06 December 2001.

The man from the home of the recently sunken Seattle
Mariners went online in Starbucks with Ed Koch,
talking to Starbucks boss Howard Schultz live by
Instant Messenger video phone.
New York Post, 26 October 2001.

VeeAreCity.com will offer news, weather, sports,
financial information and Instant Messenger and other
Internet services.
Broward Daily Business Review, 29 November 1999.

Without the Instant Messenger program, my kids stopped
fighting over the computer.
Sacramento Bee, 10 November 1999.

Other uses appear to be references to applicant or its
licensees:

Ser. Nos. 75460305, 75460306, 75496386, and 75497543
8
AOLes
(n) people who spend their whole lives talking on
Instant Messenger.
Management Today, 31 July 2001.

Aim Adjuster, a program that removes the
advertisements from American Online’s Instant
Messenger client.
Houston Chronicle, 22 October 1999.

I was on the instant messenger and my “you’ve got
mail” thing came up.
San Jose Mercury News, 05 December 2001.

We also add that there is evidence that “instant
messaging” is a generic term used in association with
applicant’s services:
The instant messaging world is dominated by four
platforms: Microsoft’s MSN Messenger, AOL Instant
Messenger (AIM), Yahoo! Messenger and ICQ (also owned
by AOL).
Computing, 22 June 2002.

But providers of instant messaging have not been able
to turn their millions into profits.
New York Times, 17 June 2002.

For more information on instant messaging programs,
visit…
Lexington-Herald Leader, 18 August 2003.

Indeed, instant messaging is a security disaster
waiting to happen, so you should take precautions to
make sure your chat app. is as safe and secure as
possible.
www.cnet.com.

Applicant responded to the examining attorney’s
evidence by presenting various types of evidence in support
of its position that its mark is not generic or descriptive
and that it had acquired secondary meaning.
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
9
According to applicant’s general counsel, Paul T.
Cappuccio (pp. 2-3), applicant began using the marks in
1997. “As early as May of 1997, applicant had 8 million
customers. At present [2000] there are over 80 million
users.” These customers use applicant’s INSTANT MESSENGER
services to send approximately one billion messages each
day. The declarant claimed that applicant “spent a
substantial amount of money promoting the mark INSTANT
MESSENGER and the accompanying services. The amount of
money spent on promoting this mark is difficult to estimate
given that many of the promotions are done in conjunction
with the promotion of Applicant’s other products [and]
services. Samples of promotional materials … are found all
over the Internet bearing Applicant’s mark.”
Applicant’s Vice-President of Brand Marketing, Eddie
Leonard, has submitted a declaration dated November 20,
2001 (p. 2) that provided evidence that applicant’s
“INSTANT MESSENGER service had over 125 million registered
users” and applicant’s webpage at “‘www.aol.com,’ which
provides a link to the INSTANT MESSENGER service and which
displays the mark INSTANT MESSENGER, receives over 28
million hits per day.”
In a declaration dated 15 February 2001, applicant’s
senior vice-president and general counsel (Randall Boe)
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
10
reported (p. 2) that applicant had licensed its INSTANT
MESSENGER mark to Earthlink, Lycos, Juno and others and
that these licensees agreed “not to do anything which may
adversely affect the validity or enforceability of the
mark.” The declarant also described one example of its
advertising efforts. In that one case, “over 60 million
copies of just one direct mail piece alone were sent out
with a prominent display of the mark INSTANT MESSENGER.”
Applicant also attached approximately twenty
declarations from users who state that they “recognize the
mark INSTANT MESSENGER as identifying the service coming
from America Online as opposed to other companies, and I
recognize that the mark INSTANT MESSENGER indicates America
Online is the source of the real time communications
service branded as INSTANT MESSENGER service.”
Applicant also performed a search of the NEXIS News
Group File for articles dated 15 June 2002 through 30 June
2002 for the term INSTANT MESSENGER. According to
applicant (Henry declaration at 1), 70 articles were found.
Of these, 43 “correctly display INSTANT MESSENGER as a
trademark and in virtually all instances specifically
identify Applicant as the source of the services offered
under the mark.” Henry declaration at 2. Applicant also
discounts 20 articles because they involve articles showing
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
11
trademark infringement, duplicate articles, and foreign
articles. In effect, applicant concluded, the majority of
the articles refer to applicant. Applicant also submitted
numerous copies of third-party trademark registrations that
show the terms “instant” or “messenger” registered on the
Principal Register without a disclaimer or an indication
that the mark was registered under the provision of Section
2(f).
Arguments
The examining attorney argues (Brief, p. 11) that the
“wording INSTANT MESSENGER has become the means by which
consumers refer to real-time Internet communications
services… The wording is generic because it is commonly
used by relevant consumers to describe the type of services
specifically offered by the applicant.” Furthermore, the
examining attorney maintains that applicant’s “computer
services, namely email and chatrooms, are ‘instant
messenger’ services that enable users to receive messages
instantly from people who are included on their ‘buddy’
lists. The wording INSTANT MESSENGER, therefore, merely
describes a feature of the applicant’s services.” Brief at
6. Regarding the question of acquired distinctiveness, the
examining attorney maintains that “‘Instant Messenger’ is
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
12
generic, and therefore, not registrable under Section
2(f).” Brief at 12.
On the other hand, applicant argues that consumers,
licensees, and third parties recognize applicant’s rights
in the mark INSTANT MESSENGER. Applicant also submitted
numerous examples of its attempts to police its mark, and
it has provided responses from entities that were cited by
the examining attorney as examples of generic use of the
term Instant Messenger. Applicant asserts that “these
third parties and publishers, including many of those cited
by the PTO, have acknowledged their mistakes or have agreed
to use Applicant’s INSTANT MESSENGER mark properly in the
future.” Brief at 16. Applicant argues that many of the
examples “may show infringement or unauthorized use of
Applicant’s mark by competitors” while others “may reflect
misuse or misunderstanding on the part of reporters writing
about unrelated third parties.” Brief at 20. Furthermore,
applicant maintains that because “applicant’s mark INSTANT
MESSENGER does not immediately call to the minds of
consumers the specific services provided under the mark,
the mark is suggestive rather than generic as applied to
such services.” Brief at 17. Finally, applicant argues
that the “first section of the PTO Brief alleges that the
mark is merely descriptive. However, there is no
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
13
allegation that the secondary meaning evidence offered by
Applicant is inadequate. Thus, if the Board finds the mark
merely descriptive, the subject application should be
approved for publication.” Reply Brief at 4.
Genericness
The first issue we must address is whether the term
INSTANT MESSENGER is generic for applicant’s services.
The Court of Appeals for the Federal Circuit has held
that: “The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Marvin Ginn goes on to
explain that:
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer
to that genus of goods or services?

Id.

When we view the examining attorney’s evidence, it is
clear why applicant’s marks were refused registration on
the ground that the marks were generic. Numerous
references in a wide variety of publications over a number
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
14
of years show use of the term “Instant Messenger” to refer
to services related to providing real time text messages.
Such excerpts as “thoughts are conveyed electronically
through instant messengers and cell phones” and “[d]rop
superfluous programs, such as instant messengers and screen
savers” clearly show generic use of the term. These
references convince us that the examining attorney has met
her initial burden of setting forth a prima facie case that
the term INSTANT MESSENGER is generic for the services
identified in applicant’s applications.
We must now consider whether applicant has rebutted
the examining attorney’s prima facie case of genericness.
To respond to this evidence, applicant has submitted its
own NEXIS evidence that attempts to show a snapshot of
NEXIS printouts during a set period (15-30 June 2002).
When we view this “snapshot,” regardless of whether we
consider the total number of stories or if we exclude the
alleged infringers, we must nonetheless conclude that the
majority of the articles refer to applicant. Moreover,
applicant has shown that it has engaged in substantial
marketing of its services under this mark. Just one
mailing of its advertisement involved 60 million copies.
In effect, the one mailing would have been distributed to a
significant percentage of the total population of America.
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
15
Furthermore, applicant has 80 million users of its
identified services. Its services deliver more than one
billion messages every day. More mundanely, applicant has
submitted affidavits from several of its customers that
demonstrate recognition of applicant’s term as a source
indicator and show that numerous corporations have either
acknowledged applicant’s term as a trademark or are
licensees of applicant.
While the examining attorney has submitted significant
evidence to support the genericness refusal, applicant’s
response is impressive. The Federal Circuit has addressed
a similar case where there was a mixed record on the
question of genericness. “The mixture of usages unearthed
by the NEXIS computerized retrieval service does not show,
by clear evidence, that the financial community views and
uses the term CASH MANAGEMENT ACCOUNT as a generic, common
descriptive term for the brokerage services to which
Merrill Lynch first applied the term.” In re Merrill
Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987) (footnote omitted). We
add that the mere fact that a record includes evidence of
both proper trademark use and generic use does not
necessarily create a mixed record that would overcome an
examining attorney’s evidence of genericness. Quite
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
16
simply, it would be fairly easy for a well-heeled applicant
to ensure that there were at least some stories that would
properly use an applicant’s mark. However, in this case,
the evidence of generic use is offset by applicant’s
evidence that shows not only a significant amount of proper
trademark use but also trademark recognition by customers,
publishers, and third parties.
We add that this case is distinguishable from Kellogg
Co. v. National Biscuit Co., 305 U.S. 111, 39 USPQ 296
(1938). In that case, the Court found that “since 1894 the
article has been known to the public as shredded wheat.
For many years, there was no attempt to use the term
‘Shredded Wheat’ as a trade mark.” 39 USPQ at 298-99. In
the present case, we cannot conclude that the identified
services have been known to the public as “Instant
Messenger” or that applicant did not attempt to use this
term as a trademark.
In light of the evidence of record, we cannot conclude
that there is clear evidence that “members of the relevant
public primarily use or understand the term sought to be
protected to refer to the genus” of the services.
Therefore, the refusal on the ground of genericness is
reversed.

Ser. Nos. 75460305, 75460306, 75496386, and 75497543
17
Descriptiveness
The next question we address is whether applicant’s
mark is primarily merely descriptive when applied to
applicant’s services.
A mark is merely descriptive if it immediately conveys
information concerning a quality or characteristic of
the product or service. [In re Nett Designs, 236 F.3d
1297, 1341, 57 USPQ2d 1564 (Fed. Cir. 1999)]. The
perception of the relevant purchasing public sets the
standard for determining descriptiveness. Id. Thus,
a mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or
characteristic of the product or service. On the
other hand, “if a mark requires imagination, thought,
and perception to arrive at the qualities or
characteristics of the goods [or services], then the
mark is suggestive.” Id.

In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003).
Another important factor is that, when we consider the
mark, we must consider it in relationship to applicant’s
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (“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”). Therefore,
applicant’s argument that its marks do “not immediately
call to the minds of consumers the specific services
provided under the mark” (Brief at 17) is not relevant.
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
18
In this case, there is evidence that consumers would
understand the term “instant messaging” as the generic term
to refer to services that are of the type identified by
applicant. See, e.g., Computing, 22 June 2002 (“The
instant messaging world is dominated by four platforms”)
and New York Times, 17 June 2002 (“providers of instant
messaging”). The High-Tech Dictionary entry made of record
by the examining attorney defines “instant messaging” as “A
live chat and email service that enables you to find your
friends when they are on line and send messages or talk via
a private chat room. Each user has a private list of
instant messaging addresses and the instant messaging
system can be set to alert you when someone on your list is
online. You can leave an email message for a user who is
not available online.” Another article describes “instant
messaging” as follows:
Instant messages appear on a recipient’s computer
screen almost as soon as they are sent and allow
“real-time” typed communication among people who are
on the Internet. To trade instant messages, though,
both sender and recipient typically have to use the
same software.
Washington Post, 19 November 1999.

The term “messenger” is used to describe software that
sends “messages.” For example, in response to a letter
from applicant’s counsel, one respondent replied that: “We
received your letter complaining about the use of the name
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
19
Instant messenger on our websites and promotion material.
We apologize [f]or this matter and changed the language
wherever we were able to … either just ‘messenger’ (like
MSN, Yahoo etc) or better Dateparty Messenger.” Email from
Ronald Stevens dated 10 December 2002. An article in CNET
dated 10 May 2002 refers to: “Virus writers have already
shown us that they know a thing or two about exploiting
messengers.” See also www.highwired.com (“[T]he messenger
will stay open until you close it, even if you navigate
away from HighWired”); CNet 01 March 2000 (“CMGI’s iCast
unveils messenger that trades video, music”).
Applicant points to numerous registrations that the
Office has issued for various marks that contain either the
term “instant” or “messenger” as evidence that its term
INSTANT MESSENGER is not merely descriptive. In these
registrations, the marks are registered on the Principal
Register without a disclaimer of the term or an indication
that the registration is under the provision of Section
2(f). In response to applicant’s argument, we note that
even “if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO's allowance
of such prior registrations does not bind the Board or this
court.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). More specifically in this
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
20
case, there is ample evidence to support a conclusion that
“Instant Messaging” is a generic term for the identified
services. There is also evidence that “messenger” is
understood by prospective purchasers or users as a term
that describes the software or program involved in
providing “instant messaging.” Thus, prospective
purchasers or users encountering the term “Instant
Messenger” used in association with applicant’s services
would immediately understand that applicant’s services
involve the sending, storing, and displaying of messages
sent by instant messaging services. Therefore, we conclude
that the term “Instant Messenger” would immediately
describe the function of the identified services, and the
examining attorney’s refusal to register the mark on the
ground of mere descriptiveness is affirmed.
Acquired Distinctiveness
Lastly, we must consider whether applicant’s mark,
which we have found to be merely descriptive, is
registrable on the Principal Register because it has
acquired distinctiveness under the provision of Section
2(f) of the Trademark Act. Here, applicant has the burden
of proving that its mark has acquired distinctiveness. In
re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
21
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1008 (Fed. Cir. 1988).
The examining attorney has not seriously questioned
applicant’s assertion that its marks have acquired
distinctiveness but instead relies primarily on the
argument that a generic term can never acquire
distinctiveness. See Brief at 12 (“‘Instant Messenger’ is
generic, and therefore, not registrable under Section 2(f)
Acquired Distinctiveness”). At this point, we refer to
some of the evidence we discussed in our genericness
discussion. To summarize, applicant has 80 million users
who send approximately one billion messages each day on
applicant’s identified services. There are millions of
visitors to its website each day where the mark is
displayed. It has licensed many corporations to use its
services identified by the term INSTANT MESSENGER. Its
advertising has reached a significant percentage of people
in the United States and it has provided some affidavits
from customers who recognize its term as a mark for
applicant’s services. Therefore, applicant has met its
burden of showing that its term INSTANT MESSENGER has
Ser. Nos. 75460305, 75460306, 75496386, and 75497543
22
acquired distinctiveness and the examining attorney’s
refusal to register under Section 2(e)(1) is reversed.
DECISION: The refusals to register applicant’s
INSTANT MESSENGER marks (Serial Nos. 75497543 and 75496386)
on the ground that the marks are generic, or because
applicant must disclaim the generic term INSTANT MESSENGER
(Serial Nos. 75460305 and 75460306) are reversed. The
examining attorney’s refusal to permit registration of
applicant's marks under Section 2(f) is, likewise,
reversed. The applications will be published for
opposition with a notation of applicant's claim under the
provision of Section 2(f) of the Trademark Act.