eEye, Inc.

Trademark Trial and Appeal Board

Sep 4, 2003

No. 75713044 (T.T.A.B. Sep. 4, 2003)

Mailed: Paper No. 17
September 4, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re eEye, Inc.1
________
Serial No. 75/713,044
_______
Eric L. Tanezaki of Stetina Brunda Garred & Brucker for
eEye, Inc.
Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Hanak and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
An application has been filed by eEye, Inc. to
register ECOMPANY on the Principal Register for services
identified as:
“Promoting the web sites of others via web sites
on a global computer network,” in International
Class 35; and
1 The application was filed by eCompany, LLC, which assigned it
to eCompany, Inc. Later, eCompany, Inc. changed its name to
eEye, Inc. The assignment and change of name, respectively, are
recorded in the USPTO Assignment Branch at Reel 2628, Frame 0063,
and Reel 2662, Frame 0131.
This Opinion is Not
Citable as Precedent of
the TTAB
Ser No. 75713044
2
“Computer services, namely, designing and
implementing global network web pages for others;
hosting the web sites of others on a computer
server for a global computer network; providing
multiple-user access to a global computer
information network for the transfer and
dissemination of a wide range of information;
providing and developing software programming for
managing businesses for others for use on a
global computer network; and providing e-mail
receipt and response services for others for a
global computer network,” in International Class
42.
The application was filed based on applicant’s claim
that it has been using the designation since June 20, 1996
and using it in commerce for the identified services since
May 21, 1997. The trademark examining attorney has refused
registration under Section 2(e)(1) of the Lanham Act, 15
U.S.C. §1052(e)(1), on the ground that the designation will
be perceived by prospective purchasers of the services as
merely descriptive. Applicant, as an alternative to its
claim that the designation is inherently distinctive and
registrable, has asserted under Section 2(f) of the Lanham
Act that the mark has acquired distinctiveness. The
examining attorney responded that the designation is
essentially generic and no amount of evidence of acquired
distinctiveness can establish a right to register the
designation for the identified services.
Ser No. 75713044
3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Applicant stated in its brief that it did not desire an
oral hearing.
The Record
For this appeal we take judicial notice of a computer
dictionary definition of the “E-” prefix2 as well as a
standard dictionary definition of the word company.3
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). The record created by
the examining attorney and applicant includes 10 excerpts
of articles retrieved from the NEXIS database (the only
items put in by the examining attorney); a consent
agreement entered into by applicant and The Fortune Group,
2 E See exponent and e-.
e- (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.
McGraw Hill Computer Desktop Encyclopedia 295 (9th ed. 2001).
3 company n. pl. –nies. …6. A business enterprise; firm.
The American Heritage Dictionary of the English Language 270 (New
College Ed. 1976).
Ser No. 75713044
4
a division of Time, Inc., whereby each consents to the
other’s use and registration of ECOMPANY4; a declaration by
Firas Bushnaq, applicant’s president and C.E.O. (according
to the signature line of the involved application),
detailing marketing and advertising expenditures by
applicant and supported by copies of two advertisements
placed by applicant; a second declaration by Mr. Bushnaq
detailing additional marketing or advertising activities
and supported by reprints of the “search results” pages
from searches for “ecompany” on the Internet, by reprints
showing listings of applicant in certain online
directories, by some press releases from applicant which
appear on its web site, and by a reprint of an article
discussing applicant that was included in an online
Internet industry newsletter; and a third declaration from
Mr. Bushnaq detailing the number of “hits” recorded at
applicant’s web site (reported by Mr. Bushnaq to have the
URL of http//:www.ecompany.net5), and supported by a reprint
4 Time, Inc. had, prior to eEye, filed an application to register
eCompany (in stylized form). The examining attorney’s first
office action addressed only the question of whether there might
be a likelihood of confusion if the prior-filed application
resulted in issuance of a registration. After the consent was
filed, the descriptiveness refusal was raised for the first time
in the second office action. The examining attorney’s NEXIS
evidence was not provided until the third office action.
5 Since web addresses, as evidenced by various items in the
record, generally begin with “http://” rather than with
Ser No. 75713044
5
of an article about applicant appearing in the Los Angeles
Times (Mr. Bushnaq reports that the article appeared “in
the Orange County edition, Business Section,” and has
provided a copy retrieved from the newspaper’s web site.6
The Arguments
The examining attorney essentially contends that the
“E” prefix, whether used with or without a hyphen, means
“electronic,” and would be understood by applicant’s
customers as a reference to the Internet. In addition, the
“http//:”, we take applicant’s web address to be
http://www.ecompany.net.
6 The examining attorney did not attempt to introduce a
definition of the “E” prefix until he attached one to his brief;
and although he referenced a definition of “company” in his
brief, he did not provide information that would allow applicant
or the Board to verify the recited definition. Specifically, in
regard to the latter, though the examining attorney stated in his
brief that the definition of “company” came from Webster’s Third
New International Dictionary, he did not provide page or edition
information; nor did he provide a photocopy of the page (if the
definition is from a printed volume) or a reprint of an online
listing with its web address (if the definition is from a web
version of the dictionary).
Because the examining attorney did not make either the
definition of “E” or the definition of “company” of record with
any of the six office actions he issued, he is, essentially,
asking the Board to take judicial notice of the definitions by
discussing them for the first time in his brief. We grant the
request in regard to the definition for the “E” prefix, but deny
it in regard to the definition of “company” (though we have, as
noted, taken judicial notice of a definition of that term from a
Board dictionary). When request is made during an appeal that
the Board take judicial notice of a dictionary definition, a
photocopy or reprint should be provided, along with information
that will allow the non-offering party to check the accuracy of
the definition or reliability of its source. Cf. In re Total
Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
Ser No. 75713044
6
examining attorney contends that a “company” is a group of
persons conducting a commercial or industrial business.
The examining attorney concludes that both the “E” [or “e”]
prefix and the word “company” are generic in this case,
because applicant provides its services electronically,
i.e., over the Internet, and is a company. Further, the
examining attorney asserts that “[a]pplicant has taken
[these] two generic terms, ‘company’ and ‘e,’ and created a
combined expression in which said terms lose no descriptive
significance but instead form a term generic for the
provider of the services.” Brief, p. 2. Finally, the
examining attorney argues that “just a few of the entries
from the thousands found in the Lexis/Nexis Research
database”7 show that “‘ecompany’ has become virtually
synonymous with any business rendering services
electronically, i.e., over the internet. So widespread is
the use of said term that it can be safely said it is as
readily employed and recognized as a term of art in
business as [are] ‘email’ and ‘ecommerce.’”
In regard to applicant’s alternative argument that
ECOMPANY has acquired distinctiveness, the examining
7 We do not have an indication of the particular database within
the NEXIS service searched by the examining attorney, or of the
term searched for. The submitted excerpts, however, are for
stories 1, 6-7, 9-10, 12, 14-15, and 19-20 of 6,024 excerpts
Ser No. 75713044
7
attorney asserts that it was “carefully reviewed and found
not to be persuasive.” Further, the examining attorney
asserts that because the “putative mark is generic of the
provider of the recited services” no amount of evidence of
secondary meaning can convert the term into a registrable
mark.
Applicant, on the question of whether the designation
is descriptive or suggestive, contests the significance of
the NEXIS evidence, asserting that the excerpts only show
use of “ecompany” “to indicate a medium in which certain
business services are conducted… and certainly not the
substantive nature, feature or characteristic of those
businesses….” This evidence, applicant asserts, does not
“capture the true essence of [its own] services.” Brief,
pp. 5-6. Applicant admits that a consumer encountering
ECOMPANY in the marketplace will be inclined to think of “a
mere computer medium in which various types of business
services can be conducted” but would have to engage in
“compounded analytical thought to arrive at some kind of
knowledge” of applicant’s specific services. Brief, p. 9.
Moreover, applicant argues, consumers may be inclined to
think of “electric utility company services or electronic
retrieved by the search, and show use of “e-company,” or “e-
companies.”
Ser No. 75713044
8
company services involving electronics.” Finally,
applicant distinguishes the body of case law on which the
examining attorney relies, case law that holds a term which
aptly describes the provider of goods or services is
descriptive or generic of the goods or services provided by
such an entity.
In regard to the evidence of acquired distinctiveness,
applicant argues that it has used ECOMPANY for at least six
years and continues to do so; that it has spent “in excess
of half a million dollars” on advertising and other
promotions over the course of those six years; that its web
site is prominently placed within the lists of results of
searches for “ecompany” on Internet search engines (Bushnaq
declaration submitted with November 6, 2001 response to
office action); and that applicant has been recognized by a
subcommittee of the U.S. House of Representatives and
through its receipt of various accolades in the Internet
industry.
Decision
It is, of course, well settled that the question
whether a term is merely descriptive is determined not in
the abstract but, rather, in relation to the goods or
services for which registration is sought, the context in
Ser No. 75713044
9
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 or user of the goods or
services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979) and In re Recovery, 196 USPQ 830, 831 (TTAB
1977).
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, if it immediately conveys information
about an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). 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 merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or idea about them. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Thus, it is
not necessary, in this instance, that a prospective
purchaser of applicant's services be immediately apprised
of the full panoply of applicant's services for the term
ECOMPANY to be found merely descriptive.
Ser No. 75713044
10
It has been held that genericness is the ultimate form
of descriptiveness and there is a fine line between what
merely describes a function, feature, attribute, or
characteristic of a product or service and what can fairly
be said to be the name of the product or service. In re K-
T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788
(Fed. Cir. 1994) (Court affirmed Board’s finding that the
words “The Sofa & Chair Company” were not generic, but were
aptly descriptive of "custom manufacturing of furniture
upholstered with fabrics furnished or pre-selected by
customers”). A term held not to be generic but, rather,
merely descriptive, is registrable upon a showing that
sufficient use and recognition has imbued the term with a
meaning apart from its mere descriptiveness. Id., 29
USPQ2d at 1788-89.
We disagree with the examining attorney’s conclusion
that ECOMPANY is, in this case, to be considered a generic
term for applicant’s identified services. The Office, of
course, must make a “strong showing” when it refuses a mark
as generic rather than descriptive. Id., 29 USPQ2d at
1788. No matter how widely the term “ecompany” may be used
in conjunction with businesses that do business
electronically, i.e., over the Internet, it is simply not
the name of applicant’s services. Certainly, the examining
Ser No. 75713044
11
attorney has not made a strong showing that ECOMPANY is the
name of what may readily be said to be web page design
services, web site hosting services, and the like. Showing
that applicant, just like other businesses that do business
on the Internet, may be referred to as an “ecompany” (a
proposition which we discuss below), does not establish
that ECOMPANY is the name of applicant’s services.
We also disagree with the examining attorney’s
conclusion that this case is akin to various cases cited as
standing for the proposition that when a term is a
descriptive or generic designation of the nature of one’s
business it necessarily is a descriptive or generic
designation for the goods or services of that business. In
each of the cases discussed by the examining attorney, the
name of the product or service also was, in essence, the
name of the company. In the case at hand we simply do not
have the same convergence between the name(s) of
applicant’s services and its own name.8
On the other hand, although we do not find ECOMPANY
generic for applicant’s services, we do find the term
descriptive of the result one would obtain from purchasing
8 This argument was raised by the examining attorney when
applicant still had the business name “eCompany.” Now, as noted
earlier, it has the business name “eEye” which further
distinguishes the instant case from those on which the examining
attorney has relied.
Ser No. 75713044
12
applicant’s services. The NEXIS evidence clearly shows
that entities doing business on the Internet are called
“ecompanies.”9 Indeed, the previously referenced definition
of the “e” prefix contemplates the transition of a company
to an “ecompany” (“The ‘e’ prefix… may be attached to
anything that has moved from the physical world to its
electronic alternative….”).10 Thus, a company that moves
into the realm of “ebusiness”11 or “ecommerce” would readily
be referred to as an “ecompany.” The readiness with which
the term “ecompany” would be perceived as indicating that a
company has transitioned into electronic or Internet
9 For example, in a transcript from a CNN broadcast, a reporter
states: “This bookselling e-company manages by giving its
customers the option of using either credit cards or checks.”
Another NEXIS excerpt mentions “Fortune Magazine’s [October,
1999] e50 list of [the] 50 most important e-companies”; and still
another reports that “Healtheon/WebMD, the online health
information and services provider, yesterday became the latest e-
company to announce layoffs.”
10 See also, in this regard, In re Styleclick.com Inc., 57 USPQ2d
1445, 1448 (TTAB 2000) (“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.”).
11 We take judicial notice of the following definition:
e-business (Electronic-BUSINESS) Doing business online. The
term is often used synonymously with e-commerce, but e-business
is more of an umbrella term for having a presence on the Web. An
e-business site may be very comprehensive and offer more than
just selling its products and services. For example, it may
feature a general search facility or the ability to track
shipments or have threaded discussions. In such cases, e-
commerce is only the order processing component of the site. See
e-commerce.
McGraw Hill Computer Desktop Encyclopedia 297 (9th ed. 2001).
Ser No. 75713044
13
operations is apparent from one of applicant’s
advertisements that appeared in the Los Angeles Times
business section. Titled “Expand Your Business on the
World Wide Web” the ad touts applicant as “a premier web
presence provider, not just a hosting service” and as
capable of providing “services that equal real executive,
business and commerce solutions for you and your company.”
To the right of the text that includes these phrases is a
menu-style list of the following terms: “eBusiness,”
“eCommerce” “eDesign,” “eMarketing” and “eSolutions.”
Plainly, this list of terms will be seen as naming the
types of services applicant offers. Applicant uses clearly
generic terms, i.e., terms which already appear in
dictionaries, such as “eBusiness” and “eCommerce,” with
other terms that may be viewed as descriptive or generic
when used in conjunction with the operation of a business,
and have merely had the prefix “e” added, i.e., design
becomes “eDesign,” marketing becomes “eMarketing,” and
solutions becomes “eSolutions.” In this context, a company
considering a purchase of applicant’s services will readily
and immediately conclude that it can become an “ecompany”
by purchasing the services.
We also note applicant’s exhortation, in its ad, for
prospective customers to “give us a call. Put the ‘e’ in
Ser No. 75713044
14
your company and take your business global.” This
exhortation to “[p]ut the ‘e’ your company” complements the
menu-style list of other “e” terms and will be perceived by
many, if not most, as a reference to moving “from the
physical world to its electronic alternative,” i.e., for
the prospective customer to become an “ecompany.”
Further, the following principle, expressed in the
Styleclick.com case, is equally applicable here: “As the
Internet continues to grow, merely descriptive ‘e-’ prefix
terms for Internet-related goods and/or services must be
kept available for competitive use by others.”
Styleclick.com, supra, at 1448.
We are not persuaded that ECOMPANY is suggestive
rather than descriptive by applicant’s argument that the
NEXIS evidence only reveals the medium within which
“ecompanies” operate. Clearly, the excerpts use “e-
company” and “e-companies” as nouns for the companies
discussed, i.e., as descriptive terms for the companies,
not their method of operation (although clearly method of
operation is also revealed). We also are not persuaded by
applicant’s arguments that prospective customers may
consider ECOMPANY to be a reference to an electricity-
related company, because it is well settled that the
Ser No. 75713044
15
significance of a term is considered not in the abstract
but in relation to the identified goods or services.
Having determined that ECOMPANY is a descriptive, but
not generic, designation for applicant’s services, we now
must consider whether applicant has shown sufficient
evidence of acquired distinctiveness to gain a place on the
Principal Register for the designation. We find that it
has not made such a showing.
To begin, the term is highly descriptive and,
therefore, requires a stronger showing of acquired
distinctiveness before it can be registered. See K-T Zoe,
supra, 29 USPQ2d at 1789 (The degree of acquired
distinctiveness that must be shown varies with the degree
of descriptiveness of the mark). The more descriptive the
term, the more evidence of secondary meaning is required to
attain registration. Yet in three declarations from
applicant’s president, we do not have a claim of
substantially exclusive use of the term and we do not have
any statement detailing actual sales of applicant’s
services.
As to the former point, i.e., exclusivity of use, even
applicant would have to acknowledge that its use is not
substantially exclusive. It has made of record a consent
agreement whereby it consents to use by another of the term
Ser No. 75713044
16
ECOMPANY; and the first of Mr. Bushnaq’s declarations
attests to the majority of the ad expenditures of applicant
being spent on ads in a magazine known as ECOMPANY NOW.
As to the latter point, Mr. Bushnaq has not, in any of
his declarations, specified any sales figures for
applicant’s services. In an article that appeared in the
Los Angeles Times in June 2002, and which is attached as an
exhibit to Mr. Bushnaq’s third declaration, it is reported
that sales of applicant’s Internet security products “is
starting to flourish, with sales running at about $1
million a month and profit rolling in since midsummer.”
However, it is not clear that any of these sales are for
the services identified in the application, and it appears
that they are sales of eEye products, not ECOMPANY
services. Thus, while applicant offered the article as an
exhibit to Mr. Bushnaq’s third declaration, applicant has
failed to relate the information in the article to its
application. The failure is significant. See K-T Zoe,
supra, 29 USPQ2d at 1789 (evidence of acquired
distinctiveness “must relate to the specific services set
forth in the application, and the specific mark for which
registration is sought”).
As to the marketing and ad expenditures detailed in
Mr. Bushnaq’s first declaration, these ranged from $30,000
Ser No. 75713044
17
to $60,000 dollars per year from 1997 through 2000. These
annual expenditures are stated to have been paid for “print
advertisements in directories, newspapers, and telephone
books, [and] online banner advertisements” as well as for
“press releases.” We do not find these figures
particularly large annual amounts when spread over various
types of activities, including possible internal expenses
related to issuing of press releases.
Mr. Bushnaq’s first declaration also details a more
expensive undertaking, specifically, placement of 18 full-
page ads at $14,000 each in 2000 and $22,100 each in 2001,
in each of the first 18 monthly editions of ECOMPANY NOW.
A copy of the first of these ads was submitted as an
exhibit. Mr. Bushnaq’s declaration states that the per ad
prices reflect “guaranteed distribution of 250,000,000
[i.e., 250 million] magazine copies” in 2000 and
“anticipated distribution of 325,000,000 [i.e., 325
million] magazine copies” in 2001. We admit, however, to
some inability to place this information in context and
some suspicion that the figures include typographical
errors. We do not assume that these distribution figures
are monthly figures; and even taken as yearly figures,
there would, for example, have to be nearly 21 million
magazines distributed each month to reach the 250 million
Ser No. 75713044
18
figure for the year 2000, and many millions more
distributed each month to reach the 325 million figure for
2001. Because of our uncertainty about these figures, we
have not given them very much weight.
Turning to Mr. Bushnaq’s second declaration, the
exhibits thereto are said to evidence the success of
applicant’s efforts to establish its presence online. Mr.
Bushnaq states that when a search for the term “ECOMPANY”
is executed on the Internet, applicant has “first page
placement” on the search results pages returned by five
different search engines. We do not find the search
results pages very probative, if at all, of the extent to
which prospective purchasers of applicant’s type of
services may recognize ECOMPANY as a mark. First, even if
we were to assume that such prospective purchasers would
seek information on such services on the Internet (which
is, perhaps, a reasonable assumption) by searching for the
term “ECOMPANY” we would not assume that the mere act of
searching for that term evidences searches for applicant,
as opposed to searches for a descriptive term which could
lead the searcher to information on services that would
allow it to become an “ecompany.” Second, the search
results pages for each of the search engines reveal many
links to web pages that contain the term “ecompany” in
Ser No. 75713044
19
their addresses and which are not, apparently, applicant’s
web pages.12 In short, we do not view the asserted “first
page” placement on search results pages as very probative
evidence of acquired distinctiveness.
Other exhibits submitted with Mr. Bushnaq’s second
declaration include press releases posted on applicant’s
web site and a reference to applicant in an Internet
newsletter. All three focus on eEye Internet security
products and only mention in passing that eEye is a
division of eCompany. Apart from the fact that these
references now appear to be out-of-date, due to applicant’s
change of name from eCompany, Inc. to eEye, Inc., they do
not appear to use the ECOMPANY designation as a trademark,
as opposed to as a trade name, and do not appear to
associate the designation with the services in the
application before us.
Finally, we turn to the third of Mr. Bushnaq’s
declarations. This discusses the number of “hits”
registered by applicant’s web site; and is used to
introduce an article from the Los Angeles Times. As to the
article, it is subject to the same criticism as the press
12 As noted earlier in our discussion of the record Mr. Bushnaq’s
third declaration reports applicant’s web page address as what we
take to be http://www.ecompany.net, and each of the search
results pages brings up numerous web addresses that feature
“ecompany” in the address but are not applicant’s web address.
Ser No. 75713044
20
releases and Internet newsletter discussed above, in terms
of its focus on eEye rather than ECOMPANY. As to the
“hits” registered by applicant’s web site, we have no
context for this information. We do not know, for example,
whether visitors to the site were exposed to use of
ECOMPANY in the manner of a trademark and in association
with the services in the application before us. In short,
although the recitation of the number of hits per se is
some evidence of exposure of the public to applicant's
mark, when all of the 2(f) evidence is considered in terms
of the highly descriptive nature of the mark, the evidence
simply isn't sufficient to show acquired distinctiveness.
Decision: The refusal of registration under Section
2(e)(1) of the Lanham Act is affirmed both because we find
the designation sought to be registered descriptive and
because there is insufficient evidence of acquired
distinctiveness.