IronPort Systems, Inc.

Trademark Trial and Appeal Board

Sep 14, 2007

No. 78611699 (T.T.A.B. Sep. 14, 2007)

Mailed:
September 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IronPort Systems, Inc.
________

Serial No. 78611699
_______

Christopher J. Palermo, Rhys Cheung and Anwar Imam of
Hickman Palermo Truong & Becker LLP for IronPort Systems,
Inc.

Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Rogers and Kuhlke,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

IronPort Systems, Inc. (applicant) has applied to
register FIXING EMAIL as a mark on the Principal Register.
Registration is sought in standard character form for goods
identified, following amendment, as "Computer hardware
configured as mail transfer agents; computer software for
protecting e-mail messages against computer viruses, and
for prevention of unwanted e-mail messages." The
This Opinion is Not a
Precedent of the TTAB
Ser No. 78611699
2
application is based on applicant's stated intention to use
the proposed mark in commerce.
The examining attorney refused registration under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on
the ground that, when used for the identified goods, FIXING
EMAIL will be descriptive of them, and also required
applicant to submit "advertisements or promotional
materials for goods of the same type." (Office action of
November 21, 2005.) Applicant responded with arguments in
support of registration and with numerous reprints of its
web pages and marketing brochures to illustrate the nature
of its goods. (Response of May 19, 2006.) Unpersuaded by
the arguments and submissions, the examining attorney
issued a final refusal of registration. (Office action of
June 26, 2006.) Applicant then appealed and briefs have
been filed.
The briefs of applicant and the examining attorney
ably set forth relevant statements of the law governing
analysis of the issue of descriptiveness and we will not
repeat the case law unnecessarily in this decision.
Rather, we will focus on the case law that is applicable to
the key issues in this case.
One issue not in dispute is that "email" (the term
used in applicant's proposed mark) and "e-mail" (a term
Ser No. 78611699
3
appearing in the identification of goods) are synonymous.
Further, there can be no reasonable argument that "email"
is not descriptive when used for the identified goods,
which include, inter alia, software for screening out
unwanted email messages or spam. As revealed by the
definitions of "email" put into the record by the examining
attorney, email can mean electronic messages or the
computerized messaging system through which such messages
are transmitted.1
In essence, applicant and the examining attorney
differ as to the significance of the term "fixing" in the
proposed mark, when used for the identified goods. This is
understandable, if for no other reason than that the
examining attorney's evidence shows at least seventeen

1 Applicant, for the first time in its reply brief, asserted that
the examining attorney had not relied on an "ordinary" meaning
for "email" but does not specify the non-ordinary meaning on
which the examining attorney has relied. Applicant does contend
that, "Email threats are external to the email system, and not
part of the email system. Therefore, email threats are not
within the ordinary meaning of EMAIL." Reply brief, p. 5.
However, this argument is a red herring.
The examining attorney's earlier discussion of email threats
was responsive to, and in part quoted from, a marketing brochure
submitted by applicant that discusses applicant's efforts to
combat email threats. Further, the distinction applicant
attempts to draw between what may be part of an email system and
what may be external to it is belied by applicant's own marketing
material. As applicant's brochure explains, users of its anti-
spam product will be protected from, inter alia, "spyware threats
distributed over email." See attachment 9 to applicant's May 19,
2006 response. A spyware threat distributed by email must
necessarily be within the email system.

Ser No. 78611699
4
meanings for "fix" as a verb and seven meanings as a noun.
(Office action of November 21, 2005.) To facilitate our
assessment of which of these meanings, if any, would
immediately come to mind for prospective purchasers or
users of applicant's identified goods, we must first
consider the nature of the goods, as illustrated by the web
pages and marketing brochures provided by applicant. See
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998) (question whether a proposed mark is
merely descriptive is not determined by asking whether one
can guess, from the mark itself, what the goods or services
are, but rather by asking, when the mark is seen on or in
connection with the goods or services, whether it
immediately conveys information about their nature).
Applicant has applied to register its mark for the
identified goods under the intent to use provisions of the
Trademark Act and has not, to date, filed an allegation of
use. However, applicant has made of record reprints of
some of its web pages and marketing brochures. We note in
particular applicant's submission of web pages said by
applicant to contain a "general company description" and to
use the proposed mark "in a trademark sense." (Attachment
1 to applicant's May 19, 2006 response.) On these pages,
as well as on other submitted web pages, applicant utilizes
Ser No. 78611699
5
the statutory registration symbol adjacent to its company
name and the "TM" designation adjacent to various other
terms.2 Applicant does not, however, utilize the TM
designation next to "Fixing Email," which is not associated
with any generic product name, and which appears as a
section heading for a discussion of applicant's business
and products. Thus, we do not agree with applicant's
contention that "Fixing Email" is used on this web page "in
a trademark sense."
Prospective customers of applicant viewing this page
would find "Fixing Email" to mean one of two things. They
may find it to mean that applicant and its products are
dedicated to fixing the email system:
While email has become the #1 online application,
the infrastructure with which email is sent,
received, and managed hasn't evolved much in over
20 years. IronPort is driving new standards and
providing breakthrough products for those faced
with the monumental task of managing, protecting,
and growing this mission-critical business
communication system.

2 Attachment 1 (www.ironport.com/uk/company/) is headed
"IronPort® Company" and includes references to the "IronPort C-
SeriesTM" email security appliances and its proprietary operating
system "AsyncOSTM." Attachment 12
(www.ironport.com/products/ironport_compliance_solutions.html) is
headed "IronPort® Compliance Solutions" and includes discussions
of "IronPort Compliance FiltersTM" and the "IronPort Mail Flow
MonitorTM and Mail Flow CentralTM."

Ser No. 78611699
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The reader of this passage under the heading "Fixing
Email" would take the heading to mean that applicant is
involved in making the email system "stable, firm or
secure." See the ninth definition of "fixing" attached to
the Office action of November 21, 2005 ("9. transitive and
intransitive verb make or become secure: to make something
stable, firm or secure, or become so.") (italics and bold
in original). Certain of the NEXIS excerpts introduced by
the examining attorney with the June 26, 2006 final Office
action illustrate this same meaning (emphasis in excerpts):
http://www.opera.com/), which popularized tabbed
browsing, has been upgraded to version 7.21 and
now sports an undo feature and fixes to the e-
mail client. Belleville News-Democrat, October
20, 2003.

The work is doubly discouraging for the
information technology crews here because the
very technicians who are fixing the E-mail worm
and virus problems are slated to be laid off amid
budget cuts, Mainord said. The Commercial Appeal
(Memphis, TN), August 23, 2003.

He didn't have a target date for repairs, but he
said some temporary steps have been taken to fix
the e-mail problems. The Oregonian, February 26,
2001.

The result: Amerinet's information technology
department no longer fusses with fixing the e-
mail system when it crashes or upgrades it when
it needs improvement. St. Petersburg Times
(Florida), September 10, 2000.

Yahoo Mail producer Lisa Pollock said the company
added a fix to its e-mail service last week in
which an account will "lock up after a certain
Ser No. 78611699
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amount of failed logons." InternetWeek, February
22, 1999.

Each of the foregoing excerpts refers to fixing a
problem with an email system or some component thereof.
While applicant's company profile may discuss its products
as fixing the email system in a broad sense, and the NEXIS
excerpts may be focused on more particular or specific
email systems or issues, the context of use is clearly the
same and equally descriptive. In re Fiduciary Special
Services, Inc., 226 USPQ 48, 50 (TTAB 1985) ("That
applicant's mark describes the general category of its
services rather than particular features of its services
does not render the mark any less descriptive".)
The other possible meaning that customers familiar
with applicant's existing products will ascribe to "Fixing
Email," when used for the identified goods, is that one or
more of these products enhances security by allowing the
source or location of email messages to be "fixed," i.e.,
pinpointed with some degree of accuracy. Indeed, applicant
acknowledges the potential for customers to ascribe such a
meaning to its proposed mark when it discusses in its main
brief the NEXIS excerpts on which the examining attorney
relies. In particular, applicant acknowledges the October
6, 2006 excerpt from the New York Times as illustrating
Ser No. 78611699
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this meaning, but contends it is the only excerpt
illustrating this meaning. (Brief, pages 5-6.) We find,
however, that the November 12, 2001 excerpt from Computer
Reseller News also illustrates this meaning. Moreover,
applicant's discussion of its "email traffic monitoring"
products and services on its web pages and in its product
brochures shows that applicant's products fix the location
or source of email:
"SenderBase has the most accurate view of the
sending patterns of any given mail sender"
(attachment 1, Response of May 19, 2006)

"IronPort's reputation filtering technology
identifies suspicious email senders" and
"Reputation filters are extremely high
performance, processing messages at the IP
address level" (attachment 3)

"The IronPort X1000 contains DomainKeys
technology to digitally sign each outgoing
message and establish your identity with
receivers on the Internet" (attachment 4)

"a new scanning technology that enables multi-
vendor signature-based spyware filtering"
(attachment 5)

"see which users are sending the most mail" and
"End-to-end communications auditing enables
administrators to know where, and when, a
communication took place" (attachment 6)

"Mail Flow MonitorTM delivers complete real time
visibility into who is sending you email" and
"Mail Flow CentralTM allows you to find the status
of any message that has traversed your
infrastructure" (attachment 9)

Ser No. 78611699
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"Some of the filters are reputation-based,
examining the source of the email" (attachment
10)

"Instantly track messages for compliance audits"
(attachment 12)

Because applicant filed its application based on its
stated intention to use the proposed mark and has not
alleged actual use and filed a specimen showing use for the
identified goods, we cannot be more precise as to which of
the two possible meanings consumers will be more likely to
ascribe to the proposed mark when used for the identified
goods. However, both meanings carry with them only
descriptive significance. See In re Vehicle Information
Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994) (involving
the proposed mark "The Nation's Local Electronic
Classifieds"):
We are left to consider whether a reasonable
interpretation of the proposed mark would provide
information about a feature or characteristic of
the services as they are specified in the
application. A typical purchaser of applicant's
computerized advertising service would not be
unreasonable in understanding the words used in
the proposed mark to mean that the service
consists of providing, on a nationwide basis,
classified advertisements for vehicles available
in particular local areas. Other possible
interpretations could be that as far as local
electronic classifieds are concerned, applicant
claims to be the only one in the nation providing
such services or the favorite or preferred one in
the whole nation. None of these possible
interpretations involves elaborate reasoning or
Ser No. 78611699
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consideration, and none is consistent with
applicant's theory of incongruity. More important
is the fact that as to each of these
possibilities, the words sought to be registered
would be immediately understood to convey
information concerning the nature of the
services, and the services are encompassed within
applicant's identification.

Finally, applicant does not contend that the
combination of "fixing" and "email" in some way creates
incongruity, ambiguity, vagueness or some other result that
makes the combination more distinctive than the individual
parts. Compare Minnesota Mining and Manufacturing Co. v.
Johnson and Johnson, 454 F.2d 1179, 172 USPQ 491 (C.C.P.A.
1972)(combination of "skin" and "visible" into SKINVISIBLE
for transparent adhesive tape for medical and surgical use
is highly suggestive of skin that is visible when product
is used but is also suggestive of invisibility of tape and
therefore not merely descriptive) and In re Sweet Victory,
Inc., 228 USPQ 959 (TTAB 1986) (while French term GLACE and
English term LITE each were descriptive of involved goods,
juxtaposition of terms resulted in incongruity sufficient
to avoid refusal on mere descriptiveness grounds) with In
re Intelligent Instrumentation, Inc., 40 USPQ2d 1792, 1794-
95 (TTAB 1996) ("there is nothing in the term 'VISUAL
DESIGNER' which is incongruous, indefinite or susceptible
to multiple connotations" when used for particular computer
Ser No. 78611699
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programs) and In re Bongrain International Corp., 229 USPQ
67, 69 (TTAB 1985) (while some meanings for BABY would be
considered incongruous in relation to cheese, when
combination BABY BRIE used for brie cheese, ordinary
purchaser would take BABY as size designation and would not
be expected to search for alternative incongruous
meanings).
Accordingly, we conclude that the proposed mark FIXING
EMAIL will be descriptive when used for the identified
goods. Consumers would view products so identified either
as products suitable for fixing up the email system or as
products which include among their functions fixing the
location or source of email messages. Indeed, some
consumers might think both things about the products and
the ideas would be complementary and equally descriptive.
Decision: The refusal of registration under Section
2(e)(1) is affirmed.