H. Lee Browne

Trademark Trial and Appeal Board

Oct 2, 2000

No. 75267810 (T.T.A.B. Oct. 2, 2000)

Hearing: Paper No. 16
March 16, 2000 BAC
10/02/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re H. Lee Browne
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Serial No. 75/267,810
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Laurence R. Hefter and B. Brett Heavner of Finnegan,
Henderson, Farrabow, Garrett & Dunner, L.L.P. for H. Lee
Browne.
Anne T. Madden, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Quinn, Chapman and McLeod, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On April 2, 1997, H. Lee Browne filed an application
to register the mark SIGNATURE-MAIL on the Principal
Register for “computer software which enables the user to
insert images in electronic mail messages” in International
Class 9. Applicant asserted a bona fide intention to use
the mark in commerce.
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that the mark SIGNATURE-
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/267810
2
MAIL, when applied to the identified goods of the
applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and both were present
at an oral hearing before this Board.
The Examining Attorney contends that a term need only
describe one function or aspect of the goods in order to be
considered merely descriptive; that the mark SIGNATURE-MAIL
describes “the primary function of applicant’s goods,”
“which is to insert an individual’s handwritten signature
and other images into e-mail, computer faxes and documents”
(brief, pp. 2-3); and that, in fact, applicant’s website
information (filed by applicant on March 8, 1999)
emphasizes the use of applicant’s software to insert a
literal handwritten signature, with less emphasis on
inserting other images into e-mail or other documents.
Further, the Examining Attorney argues that the terms
“signature” and “mail” have commonly understood dictionary
meanings, and when combined the terms do not create a
unique or incongruous mark; and that the fact that
applicant may be the first (and possibly only) user of a
merely descriptive term does not justify registration of
said term.
Ser. No. 75/267810
3
The Examining Attorney submitted in support of her
refusal to register under Section 2(e)(1) dictionary
definitions of the words “signature” and “electronic mail”1;
and twenty excerpted stories of 3845 total stories found
from a search (framed as “signature mail or signature w/s
mail”) of the Nexis database.
The American Heritage Dictionary (1992) defines
“signature” with six definitions, including “1. Abbr. sig.
One’s name as written by oneself. 2. The act of signing
one’s name. 3. A distinctive mark, characteristic, or sound
indicating identity: A surprise ending is the signature of
an O. Henry short story.” There are also meanings specific
to the fields of medicine, music and printing.
The Examining Attorney specifically contends that in
relation to this mark in this application “the term MAIL
refers to electronic mail.” (Final Office action, October
20, 1998, p. 2.) Applicant disagrees that “‘mail’ is
synonymous with ‘e-mail’ in the 1990s.” (Reply brief, p.
4, footnote 2.) “E-mail” is defined in The Computer
Glossary: The Complete Illustrated Dictionary as “The
transmission of memos and messages over a network....”

1 She submitted with her brief dictionary definitions of the
words “electronic mail,” “e-mail” and “mail system,” and she
requested that the Board take judicial notice thereof. The
request for judicial notice is granted. See TBMP §712.01.
Ser. No. 75/267810
4
Applicant contends that it does not offer an e-mail
service or e-mail software, but rather, its computer
software “is used to add special features to electronic
documents”2; that its mark SIGNATURE-MAIL is suggestive that
applicant’s computer software “relates in some way to
special messages or correspondence” (brief, p. 6.)3; that
the Examining Attorney’s position regarding applicant’s
goods and the term “signature” is flawed because she treats
the term as if it were interchangeable with the term
“images” in applicant’s identification of goods; that
applicant’s use of the term “signature” is intended to
refer to the traditional meaning of the word4; that the term
“mail” at most suggests a type of document into which
images may be inserted, especially inasmuch as the term
“mail” is normally used to describe the method of delivery
of the mail (e.g., electronic, first class, overnight);
that applicant’s particular juxtaposition of these two

2 Applicant stated in the record that its goods are neither (i) a
password (or “signature”) needed to log onto one’s e-mail, nor
(ii) an electronic signature which accompanies data transmitted
over a network and which cannot be forged and prevents tampering
with the e-mail message while en route (a “digital signature”).
3 Applicant stated that the point of its product “is to
personalize communications and documents.” (Reply brief, p. 2.)
4 Applicant referred to Webster’s Ninth Collegiate Dictionary
wherein “signature” is defined as, inter alia, “a person’s name
written by himself ... [or] an identifying characteristic or
mark.” (Applicant’s Response, May 18, 1998, p. 4).
Ser. No. 75/267810
5
common terms, viewed as a whole, creates a unique
impression resulting in a suggestive mark; and that in view
of the multiple meanings of the term “signature” purchasers
must use imagination and thought to determine that the mark
SIGNATURE-MAIL relates to imaging computer software.
Applicant further contends that the Nexis evidence
submitted by the Examining Attorney is not persuasive
because there are no references to the words “signature
mail” together, but rather, all of the stories include only
separate uses of the words “signature” and “mail” or “e-
mail”; one excerpt is from a foreign publication; several
of the remaining 19 excerpted stories are not relevant uses
of the words in the context of applicant’s goods (e.g.,
those stories relating to Versace “signature” style and
mesh chain-mail, signature guarantees and certified mail,
obtaining signatures in a vote-by-mail election, mail order
and Signature Design International Inc., and a forged
signature at the Post Office routing a person’s home mail
to New York); and none of the stories reflects a
descriptive use of the words “SIGNATURE-MAIL” with regard
to applicant’s identified goods. Finally, applicant argues
that there is no evidence of use by others of the
combination of words “SIGNATURE MAIL”; and that doubt is
resolved in applicant’s favor.
Ser. No. 75/267810
6
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Entenmann’s Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. As the Court stated in In re Abcor
Development, supra: “Although a mark may be generally
descriptive, if it also functions as an indication of
origin, it is not ‘merely descriptive.’” See also, In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d 505
(CCPA 1980).
Of course, whether a term or phrase 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 or phrase would have to the
average purchaser of the goods or services because of the
manner of its use. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). See also, In re Consolidated Cigar Co.,
Ser. No. 75/267810
7
35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Viewing the record in its entirety, we find that the
Examining Attorney has not established a prima facie
showing that the mark SIGNATURE-MAIL, taken as a whole, is
merely descriptive of applicant’s computer software
products. We agree with the Examining Attorney that in the
context of applicant’s goods, as identified, consumers will
relate the term MAIL in applicant’s mark to “e-mail”. (We
note that applicant is the owner of several other pending
applications, including one for the mark
(Serial No. 75/611,0305. Of course, our determination in
this appeal is not binding with regard to applicant’s other
applications.)
However, the term “signature,” as evidenced by the
dictionary submissions, is a term with several different
yet commonly understood meanings, and the evidence of

5 Action on applicant’s application Serial No. 75/611,030 has
been suspended in Law Office 103.
Ser. No. 75/267810
8
record does not establish that this mark SIGNATURE-MAIL
conveys an immediate idea of a primary function of
applicant’s goods. The Nexis excerpts submitted by the
Examining Attorney are unpersuasive for the reasons
asserted by applicant, and set forth above.
Moreover, we note that the Examining Attorney did not
submit any evidence whatsoever demonstrating that the term
“signature mail” is used in a descriptive sense.
The burden of proving that applicant’s mark is merely
descriptive rests with the Examining Attorney. The record
before us does not show that the term SIGANTURE-MAIL has a
readily recognized meaning with regard to the involved
goods. That is, the mark SIGNATURE-MAIL does not readily
and immediately evoke an impression and an understanding of
the function or purpose of applicant’s imaging insertion
software. Rather, on this ex parte record, we conclude
that the mark SIGNATURE-MAIL requires a degree of
imagination or perception to determine the function or
purpose of applicant’s goods. Applicant’s mark is indeed a
juxtaposition of two common words which, when viewed as a
whole, and in relation to the involved goods (computer
software which enables the user to insert images in
electronic mail messages), is creative, and the mark has
not been shown to be merely descriptive.
Ser. No. 75/267810
9
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Decision: The refusal to register under Section
2(e)(1) is reversed.
T. J. Quinn
B. A. Chapman
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board