El-grande.com Inc.

Trademark Trial and Appeal Board

Nov 27, 2001

No. 75554945 (T.T.A.B. Nov. 27, 2001)

11/27/01

Paper No. 16
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elgrande.com Inc.
________

Serial No. 75/554,945
_______

David H. Diets of Seed and Berry LLP for
Elgrande.com Inc.

Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney)
_______

Before Simms, Walters and Wendel, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:
Elgrande.com Inc. has filed an application to register
SHOPENGINE for “on-line retail store services featuring
books, computer software, pre-recorded music, pre-recorded
motion pictures and documentaries, and pre-recorded
multimedia products.”1

1 Serial No. 75/554,945, filed September 17, 1998, based on an
allegation of a bona fide intention to use the mark in commerce.
The application as filed also included goods in Class 9 but
applicant filed simultaneously with the notice of appeal an
amendment to delete the Class 9 goods. Accordingly, the appeal
lies only with the Class 35 services.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/554.945
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark
would be merely descriptive, if used in connection with
applicant’s recited services. The refusal has been
appealed and both applicant and the Examining Attorney have
filed briefs. An oral hearing was not requested.
Applicant, in describing the nature of its on-line
retail store services, states that the services “include an
optional search function by which a user is able to search
for products of interest. This function is performed using
search engine software.” (Brief p.5). Applicant contends,
however, that SHOPENGINE is at most suggestive of its
services. Applicant argues that ENGINE is not directly or
indirectly descriptive of any other aspect of applicant’s
services, beyond this optional search function.
Moreover, applicant argues, any recognition of the
asserted descriptive meaning of the mark as a whole
involves a multi-step process, namely, a dissection of the
mark into components, speculation that engine must refer to
a “search engine” and then an assessment of how “engine” is
being used with “shop” to reach the conclusion that the
services include software which performs a search function
as part of the shopping process. Applicant asserts that
there is no recognized meaning for the term SHOPENGINE and
Ser No. 75/554.945
3
it is not used descriptively by others. In addition,
applicant argues that there is an incongruity in the
combination of the words SHOP and ENGINE in that SHOP would
most likely be viewed as a reference to “shopping” whereas
ENGINE would be perceived to refer to software which
performs a “primary and highly repetitive function.”
Shopping, according to applicant, involves too much
purchaser discretion to be effectively performed by a
software engine.
The Examining Attorney maintains that SHOPENGINE is
merely descriptive of applicant’s service in that these
services feature easy searching for specific goods because
the web site contains an ENGINE that allows a customer to
SHOP for specific products. To support this position, the
Examining Attorney has made of record dictionary
definitions of the separate words “shop” and “engine” which
include the following:
Shop 1. To visit stores in search of merchandise
or bargains.
2. To look for something with the intention
of acquiring it.2

Engine 1. Software that performs a primary and
highly repetitive function such as a
database engine, graphics engine or
dictionary engine.

2 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Ser No. 75/554.945
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2. Slang for processor.3
Thus, according to the Examining Attorney, the
individual words inform the prospective customer of a
characteristic, function, attribute or property of
applicant’s services, namely, that the applicant provides a
highly repetitive functioning processor (an ENGINE) that
enables these customers to search for merchandise with an
eye toward purchasing (SHOP). The composite mark or
combination of these two descriptive words, he argues,
remains merely descriptive, with no separate non-
descriptive meaning being created.
While applicant argues that there is no recognized
meaning for the term SHOPENGINE, the Examining Attorney
counters this argument with the evidence of record of
excerpts of articles obtained from the Nexis database in
which the term "shopping engine” has been used in
conjunction with the terms “computer” or “Internet.”4 The

3 A. Freedman, The Computer Glossary: The Complete Illustrated
Dictionary (8th ed. 1998).

4 We note that we have not considered those of the excerpts which
are newswire stories. Newswire stories are of minimal evidentiary
value because it is not clear that such stories have appeared in
any publication of general circulation and thus have had any
impact on purchaser perception. See In re Urbano, 51 USPQ2d
1776, 1778 (TTAB 1999) at n. 3; In re Men’s International
Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986).

Ser No. 75/554.945
5
following are examples of the representative sampling made
of record:
The promotional world once turned on toasters and
fishing rods ... . Then came frequent-flyer miles.
Then came Wal-mart, a decade of declining
unemployment, Priceline.com, countless other Internet
shopping engines and more frequent–flyer miles.
Advertising Age (April 17, 2000);

It’s because airlines have gotten increasingly adept
at using computers to distinguish between different
kinds of fliers, and charging different kinds of
fliers different fares. On the Internet, shopping
engines perform the same functions in reverse, while
Priceline has taken the idea of differential pricing
to its market-driven extreme.
Slate Magazine (January 13, 2000);

Today Inktomi offers search, a shopping engine and
traffic-management services for Internet service
providers.
USA TODAY (May 12, 1999);

These shopping engines represent a technical
challenge, however: the sites pull in product, pricing
and transaction data from a variety of sites and a
multitude of formats, and then massage it into a
consistent user format for visitors.
InternetWeek (April 6, 1998);

Within a few months C2B unveiled a “shopping engine”
to help consumers comparison shop on the Internet.
The American Spectator (April 1999).

The Examining Attorney argues that these excerpts show the
public’s knowledge and awareness of Internet or
computerized “shopping engines” and that, by seeking to
register SHOPENGINE, applicant is merely changing the verb
“shopping” to the verb “shop.” Such is, according to the
Examining Attorney, a “distinction without a difference.”
Ser No. 75/554.945
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Finally, for purposes of better understanding the
nature of applicant’s services, the Examining Attorney
points to a report of a television interview with
applicant’s chairman and CEO, James R. West,5 in which
applicant’s services are described as follows:
The company reports it has developed an Internet
search system called a “Shop Engine,” which allows
consumers who may be looking for particular items
to purchase, a faster method to get what they want.
“If someone uses a Search Engine,” explained West,
“to look for the latest book by Tom Clancy, they may
type in ‘Tom Clancy’ or ‘books by Tom Clancy’ and
receive thousands, maybe millions of choices, very few
of which have anything to do with buying his books.
By using the Shop Engine at http://www.ElGrande.com
however, their choices would be limited to where they
can actually buy the book itself.

Once again, the Examining Attorney maintains that the term
SHOPENGINE, taken as a whole, is neither incongruous nor
unusual, but rather merely describes applicant’s on-line
services which feature an ENGINE used to enable customers
to SHOP for specific products.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used, or is intended to be used. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir 1987); In

5 Although obtained from the newswire release of PR Newswire
dated August 6, 1999, we have considered this as evidence of the
nature of applicant’s services, rather than any public awareness
of the interview.
Ser No. 75/554.945
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re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Whether or not a particular 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 which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
goods or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979). It is not necessary that the
term describe all the characteristics or features of the
goods or services in order to be merely descriptive; it is
sufficient if the term describes one significant attribute
thereof. See In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
Applicant has acknowledged that its on-line retail
store services include an optional search function by which
users or potential customers may search for products of
interest or, in other words, search for merchandise which
they seek to buy. From the description of the services
given by Mr. West it appears that this search function is
in fact a significant feature or attribute of applicant’s
services.
Ser No. 75/554.945
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As stated above, it is not necessary that the term
SHOPENGINE describes applicant’s on-line services in their
entirety; it is sufficient if the term describes one
significant feature or attribute of these services. From
the dictionary definitions relied upon by the Examining
Attorney it is clear that ENGINE aptly describes the highly
repetitive functioning processor which applicant provides
to users such that they may search for merchandise and that
SHOP describes this latter activity. We agree with the
Examining Attorney that the composite term SHOPENGINE
retains the descriptive significance of the individual
terms, the term SHOP merely pinpointing the specific
function or use of this particular ENGINE. There is
nothing incongruous in this combination of the two terms
which might impart a non-descriptive connotation to the
composite term.
Furthermore, from the excerpts obtained from the Nexis
database, it is clear that there would be public awareness
of “shopping engines” as provided on the Internet for
purposes of comparison shopping and the like. Clearly the
modification by applicant of the word “shopping” to “shop”
fails to change the descriptive significance of the term.
Thus, we are fully convinced that potential users of
applicant’s on-line retail store services would be
Ser No. 75/554.945
9
immediately informed of the availability of such a
“shopping engine” as part of applicant’s services by the
use of the term SHOPENGINE. The term is no more than
merely descriptive of a significant feature of applicant’s
services.
Accordingly, we find SHOPENGINE would be merely
descriptive if used as intended with applicant’s on-line
retail store services.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
Ser No. 75/554.945
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