Marc S. Cooperman

Trademark Trial and Appeal Board

Feb 12, 2001

No. 75652852 (T.T.A.B. Feb. 12, 2001)

2/12/01
Paper No. 15
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Marc S. Cooperman
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Serial No. 75/652,852
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Mark J. Ingber of Waters, McPherson, McNeill, P.C.
for Marc S. Cooperman.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Quinn, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Marc S. Cooperman has filed an application to register
the mark EMAILER ID for “e-mail processing and presentation
software used in identifying and authenticating the sender
of an e-mail.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark,
as applied to applicant’s goods, is merely descriptive
1 Serial No. 75/652,852, filed March 3, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/652,852
2
thereof. The refusal has been appealed and both applicant
and the Examining Attorney have filed briefs. No oral
hearing was requested.
The Examining Attorney maintains that the proposed
mark EMAILER ID immediately describes an intended feature
or function of applicant’s software, namely, the
identification of the sender of an e-mail message. To
support this position, the Examining Attorney has made of
record dictionary definitions of the term ID as an
abbreviation for “identification,”2 of the term “e-mail” as
“messages sent and received electronically via
telecommunication links, as between microcomputers and
terminals,”3 and of the suffix “-er” as “one that performs a
specified action.”4 In addition, he has made of record
several Nexis excerpted articles showing use of the term
“emailer” to refer to the sender of an e-mail.
Representative examples include:
In key markets such as the United Kingdom, the
success of subscription-free Internet services ...
mean[s] that instead of having to install the
complicated access software commonplace just a few
years ago, wannabe emailers can just log on, plug and
play. The Hollywood Reporter (January 25, 2000);
2 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
3 Id.
4 Id. While certain of these definitions were not made of record
until the Examining Attorney’s brief, the Board is always free to
take judicial notice of such definitions.
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Now complaints are surfacing that Microsoft has been
selling lists of Hotmail addresses to bulk emailers –
that is spammers. Seattle Weekly (September 9, 1999);
Those who purport to know say emailers sent 2.7
million messages in 1997. Chattanooga Free Press
(January 30, 1998); and
Wired Style: Principles of English Usage in the
Digital Age by Constance Hale states that email is now
a “closed up” (no space, no hyphen) word that is
capitalized only if it starts a sentence. It can also
be used as a verb (Email me) or have mutations
(emailable, emailer). Chattanooga Free Press (October
26, 1997).
Applicant contends that the Examining Attorney has
failed to prove that the mark is merely descriptive in that
no dictionary definition has been cited for “emailer” per
se; no use of the words “emailer ID” has been shown on the
Nexis database nor has it been shown that the words as a
whole have a recognized meaning; and the usages of
“emailers” being relied upon are no more than as a slang
term referring to annoying direct mail senders. Applicant
further argues that the mark does not immediately convey
information to consumers as to the exact nature of
applicant’s goods; that his software in fact has many
purposes; and that there is no evidence that applicant’s
competitors in the industry have used or needed to use
EMAILER ID. Applicant points to copies of four third-party
registrations which he has made of record for other marks
containing the term ID as evidence that this term has not
Ser No. 75/652,852
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been considered descriptive when used in other composite
marks.
A term or phrase 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. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether or not a particular term or phrase 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 or phrase describe all the characteristics or features
of the goods or services in order to be merely descriptive;
it is sufficient if the term or phrase describes one
significant attribute thereof. See In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
We find the evidence of record fully adequate to
establish that each portion of applicant’s mark, EMAILER
ID, has a recognized meaning and that applicant’s mark as a
Ser No. 75/652,852
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whole simply combines these two meanings to obtain the
expected connotation, i.e., the identification of a sender
of an e-mail message. The dictionary definitions alone are
sufficient to show that the meanings of both “emailer” and
“ID” would be readily apparent to the general public. The
Nexis excerpts demonstrate that “emailer” per se is a known
term used to refer to a sender of e-mail. Even if it is
slang, although we think the one Nexis article shows
‘emailer” to be a newly adopted term in the field, this
does not detract from the public’s general understanding of
the term.
Furthermore, we find that EMAILER ID, if used with
applicant’s software, would immediately convey information
to customers as to a significant feature or function of the
software. Regardless of other purposes or functions of the
software, the software as identified is used in
“identifying ...the sender of an e-mail.” Applicant has
specifically acknowledged that one of the purposes of the
software is “enabling the recipient to determine who sent
the e-mail.” (Brief p.7) This function is clearly
described by EMAILER ID. As noted above, it is not
necessary that each and every attribute of the software be
described, a significant one is sufficient.
Ser No. 75/652,852
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Moreover, we do not determine the descriptiveness of
the mark in a vacuum, but rather in relation to the goods
upon which the mark will be used. The question is not what
the mark might mean when used alone, but what it means when
used in connection with applicant’s software product. The
correlation of EMAILER ID and applicant’s particular
software would be readily obvious.
The fact that there is no evidence of record that
applicant’s competitors have used the term is of little
note. Even if applicant were to be the only user of this
term in connection with software of this type, this does
not alter the descriptive significance of the term. See In
re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999); In
re Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB
1983). As for the third-party registrations containing the
term ID as part of the marks, we find the registration of
marks in which ID is used in combination with different
words and for different goods to be totally irrelevant.
Accordingly, we find EMAILER ID merely descriptive of
the e-mail processing and presentation software used in
identifying and authenticating the sender of an e-mail with
which applicant intends to use the mark.
Decision: The refusal to register under Section
2(e)(1) is affirmed.
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