Cairo

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75596169 (T.T.A.B. Sep. 17, 2001)

9/17/01 Paper No. 15

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cairo
________

Serial No. 75/596,169
_______

Gerald S. Schur of Welsh & Katz, Ltd. for Matthew J. Cairo.

Andrea P. Hammond, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______

Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Matthew J. Cairo has filed an application to register
the term "ECERTIFIED" for "providing certification of delivery
of e-mail messages and e-mail messages delivered electronically
via the world wide web."1

1 Ser. No. 75/596,169, filed on November 30, 1998, which is based on an
allegation of a bona fide intention to use such term in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/596,169
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's services,
the term "ECERTIFIED" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
18 (CCPA 1978). It is not necessary that a term describe all of
the properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a significant
attribute or idea about them. Moreover, whether a term is
merely descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services and the possible
significance that the term would have to the average purchaser
Ser. No. 75/596,169
3
of the goods or services because of the manner of its use. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[w]hether consumers could guess what the product
[or service] is from consideration of the mark alone is not the
test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Applicant contends in this appeal that "the record
shows that ECERTIFIED is not the descriptive name of any
service, but is a unitary term coined by Applicant and does not
have a recognized meaning to those in the relevant field." In
particular, applicant asserts that "ECERTIFIED simply has no
immediate meaning to those knowledgeable in the computer
communication field[,] who are accustomed to separated terms,
usually joined by a hyphen, such as e-business." Applicant
concedes that the Examining Attorney "has made of record
numerous materials showing that 'e' means 'electronic' in the
computer world" and admits that "obvious combinations of 'e'
hyphenated to a noun ... may be descriptive, e.g., e-business,
e-commerce, or e-conference." However, applicant argues that in
this case:
[A] unified term having two or more
components requires some initial mental
thought or step to separate the terms before
recognizing that the mark may have a
meaning. Unlike a hyphenated term where the
two or more terms are visually separated and
more easily understood, a unified mark, such
Ser. No. 75/596,169
4
as ECERTIFIED, by its nature requires more
mental manipulation than a mark having
separated terms .... Therefore, ECERTIFIED,
requiring at least the initial mental step
to separate the terms, is at most
suggestive, and not merely descriptive.

Applicant further asserts, notably without citation to
any authority, that:
[A] combination of terms is less likely
to be merely descriptive if the term is an
adjective, or the mark is a combination of
terms, all of which are adjectives, as is
the case with "ECERTIFIED". If the reader
of the term must ask the question what noun
might be applied to the adjective(s)
appearing in the mark, the term cannot be
descriptive. A mark which is an adjective
or combination of adjectives forces the
reader to complete the term with a noun in
order for the mark to be understood.
Therefore, in the case of "ECERTIFIED" the
mark, by itself, cannot be descriptive. By
the Trademark Attorney's own admission the
"E" portion of the mark is an adjective
meaning "electronic". The "CERTIFIED"
portion is also an adjective with several
dictionary meanings. The two terms in
combination do not spell out for the reader
what service the mark relates to, and
therefore is not merely descriptive.

In addition, applicant argues that the term
"ECERTIFIED" is not merely descriptive of his services because
"it does not convey an immediate idea of the services or of an
ingredient, quality, characteristic, function or feature of the
services in connection with which it is used." Applicant urges,
instead, that he has coined a mark which, since it is not a
recognized descriptive term in the relevant trade or industry,
Ser. No. 75/596,169
5
is at most suggestive of his services and therefore is
registrable.
The Examining Attorney, on the other hand, contends
that "applicant's arguments are unpersuasive." In particular,
the Examining Attorney correctly points out that, even though
"'ECERTIFIED' may be a coined term that does not yet appear in a
dictionary," such a fact "is not controlling on the question of
registrability," citing In re Gould Paper Corp., 834 F.2d 1017,
5 USPQ2d 1110, 1112 (Fed. Cir. 1987) and In re Orleans Wines,
Ltd., 196 USPQ 516, 517 (TTAB 1977). As to applicant's
assertions that the absence of a hyphen between the two
adjectives which comprise the term "ECERTIFIED" requires a
mental step in order to separate the adjectives and give meaning
to the combination, the Examining Attorney maintains that:
[The adjectival term] "e," used with or
without a hyphen, is a prefix meaning
"electronic." Given that applicant's
services are electronic certification
services, no mental manipulation is
required. A mark which combines descriptive
terms may be registrable if the composite
creates a unitary mark with a separate,
nondescriptive [sic] meaning. In re Ampco
Foods, Inc., 227 USPQ 331 (TTAB 1985).
Though the applicant states that the outcome
is different when the terms combined are
adjectives, the analysis is the same. [See,
e.g., In re Pennzoil Products Co., 20 USQP2d
1753 (TTAB 1991).] The combination of
descriptive terms in the mark ECERTIFIED
does not create a non-descriptive term.
Here, "E" is defined as "electronic";
"CERTIFIED" refers to the proof that the
Ser. No. 75/596,169
6
mail has been delivered. When considering
descriptiveness in relation to the
applicant's identified services, ECERTIFIED
merely describes a feature of those
services, namely, providing electronic
certification of delivery of electronic
mail.

....

The combination of "E" and "CERTIFIED"
in the context of the applicant's service[s]
does not create an ambiguity. The
applicant's mark is a combination of two
descriptive terms creating a unitary mark
with the same descriptive meaning. No
separate non-descriptive meaning is formed.
There is no mental step required in order to
readily perceive the descriptive
significance of the term as it relates to
certified delivery of electronic mail
messages. ECERTIFIED immediately connotes
certified electronic mail delivery, which is
the main feature of applicant's services.
Consequently, the mark is merely descriptive
of applicant's services within the meaning
of the Trademark Act.

Of record in support of the Examining Attorney's
position are definitions of the terms "e-," "electronic mail,"
"certified" and "certified mail." The term "e-," according to
the Official Internet Dictionary (1998) at 49, is an adjective
connoting "[a]n abbreviation of 'electronic' that generally
indicate[s] information or functions involving the Internet."
"Electronic mail" is defined in the electronic version of The
American Heritage Dictionary of the English Language (3rd ed.
1992) as "messages sent and received electronically via
telecommunication links, as between microcomputers or terminals.
Ser. No. 75/596,169
7
Also called E-mail," while The Computer Desktop Encyclopedia
(1996) at 280 similarly lists such term as "[a]lso called e-
mail, it is the transmission of memos and messages over a
network." "Certify," as stated in the electronic version of The
American Heritage Dictionary of the English Language (3rd ed.
1992), is a verb signifying, in pertinent part, "1. a. To
confirm formally as true, accurate, or genuine." The same
dictionary also defines "certified mail" as a noun denoting
"[u]ninsured first-class mail for which proof of delivery is
obtained." The record further contains, as applicant has
acknowledged, "numerous materials showing that 'e' means
'electronic' in the computer world." Such materials consist of
excerpts of articles from magazines, the world wide web or
Internet, and the "Lexis/Nexis" database, and evidence use of
such various terms as "e-business," "e-loan," "e-conferences,"
"e-campaigning," "e-commerce" and "eCommerce" as well as "e-
mail."
In addition, we judicially notice, as requested by the
Examining Attorney in her brief,2 that the Techencyclopedia at

2 Although such definitions were submitted for the first time with the
Examining Attorney's brief, they are being considered inasmuch as it
is settled that the Board may properly take judicial notice of
definitions in dictionaries and other standard reference works. See,
e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953); In re Hartop & Brandes, 311 F.2d
249, 135 USPQ 419, 423 (CCPA 1962) at n. 6; and University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/596,169
8
http://www.techweb.com/encyclopedia/defineterm?term=e- defines
the term "e-" as:3
(Electronic-) The "e" prefix, with or
without the dash, may be attached to
anything that has moved from the physical
world to its electronic alternative, such as
e-mail, e-commerce, e-cash, e-cards, etc.
"E" words have become synonymous with the
Internet.
Although many prefer to write the terms
without the dash, the dash is used in this
publication wherever possible, because the
dash makes it easier to identify the word;
for example, e-mail rather than email and e-
commerce instead of ecommerce.

Such term is listed in The Oxford Dictionary of New Words (1997)
at 97, which indicates that, "[f]rom the beginning of the
nineties, e-, for ELECTRONIC, has been used to form words
relating to the publication or exchange of information in an
electronic format, such as E-MAIL, e-text (see ELECTRONIC), and
e-zine (an electronically published fanzine), and words relating
to electronic financial transactions, such as e-cash and e-
money."
As the Board, in finding the term "E FASHION" to be
merely descriptive of both "computer software for consumer use
in shopping via a global computer network ... and for providing
fashion, beauty and shopping advice" and "electronic retailing

3 Likewise, we take judicial notice that The Computer Glossary (9th ed.
2001) at 125 lists "e-" as meaning "(electronic-) The 'e-dash' prefix
may be attached to anything that has moved from paper to its
electronic alternative, such as e-mail, e-cash, etc."
Ser. No. 75/596,169
9
services via a global computer network featuring apparel,
fashion, accessories, personal care items, jewelry and
cosmetics," stated in the recent case of In re Styleclick.com

Ser. No. 75/596,169
10
Inc., 57 USPQ2d 1445, 1448 (TTAB 2001) (footnotes omitted):
[W]ith each passing day, the Internet
becomes more pervasive in American daily
life. Many Internet words, such as "e-mail"
and "e-commerce," have made their way into
the general language. See: Continental
Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385 (TTAB 1999) [E-TICKET is generic
for computerized reservation and ticketing
of transportation services] .... .... We
have no doubt that in the year 2000, the
meaning of the "e-" prefix is commonly
recognized and understood by virtually
everyone as a designation for the Internet.
....

The Board, in view thereof, accordingly concluded that:
In sum, "e-," when used as a prefix in
the manner of applicant's mark, has the
generally recognized meaning of "electronic"
in terms of computers and the Internet.
When this non-source-identifying prefix is
coupled with the descriptive word "fashion,"
the mark E FASHION, as a whole, is merely
descriptive for applicant's goods and/or
services. That applicant may be the first
or only entity using E FASHION is not
dispositive. [Citation omitted.]

Id.
Likewise, in the present case, it is our view that,
when used in connection with applicant's services of "providing
certification of delivery of e-mail messages and e-mail messages
delivered electronically via the world wide web," the term
"ECERTIFIED" immediately describes, without conjecture or
speculation, a significant feature or characteristic of such
services, namely, that it provides electronic certification of
Ser. No. 75/596,169
11
delivery of e-mail messages, including those delivered
electronically via the world wide web. Stated otherwise, the
term "ECERTIFIED" conveys forthwith, without the need for any
imagination, cogitation or the gathering of further information,
that applicant provides electronic certified e-mail services.
Thus, just as the term "CERTIFIED," when used in connection with
ordinary or so-called "snail" mail, is a shorthand designation
for "certified mail" and hence merely describes mail for which
certification or proof of delivery is obtained or provided, it
is readily apparent that to consumers of applicant's services,
the term "ECERTIFIED," if used in relation to electronic mail
services or e-mail, likewise signifies electronically certified
mail and therefore merely describes e-mail for which
certification of the delivery of electronic messages is
provided.
Furthermore, while the presence of a hyphen separating
the descriptive prefix "E-" from the descriptive term
"CERTIFIED" may make it easier for some consumers to comprehend
the meaning of the combined term "E-CERTIFIED," the absence of a
hyphen simply does not detract or otherwise lessen the merely
descriptive significance immediately conveyed by the term
"ECERTIFIED," since such combinations, regardless of whether
they contain a hyphen, have become synonymous with the Internet
and electronic communication in general. Clearly, like the
Ser. No. 75/596,169
12
designation "E-CERTIFIED," there is nothing in the term
"ECERTIFIED" which, when considered in the context of
applicant's services, is ambiguous, incongruous or susceptible
to any other plausible meaning.
Accordingly, because the term "ECERTIFIED" conveys
forthwith a significant feature or characteristic of applicant's
services of "providing certification of delivery of e-mail
messages and e-mail messages delivered electronically via the
world wide web," it is merely descriptive thereof within the
meaning of the statute. See, e.g., In re Styleclick.com, supra.
See also, Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385, 1396-97 (TTAB 1999).
Decision: The refusal under Section 2(e)(1) is
affirmed.