Panasonic Corporation of North America

Trademark Trial and Appeal Board

Sep 11, 2007

No. 76002076 (T.T.A.B. Sep. 11, 2007)

Mailed: 9/11/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Panasonic Corporation of North America
________

Serial No. 76002076
_______

Morton Amster of Amster, Rothstein & Ebenstein for
Panasonic Corporation of North America.

Tamara G. Frazier, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).1
_______

Before Seeherman, Quinn and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Panasonic Corporation of
North America to register the mark E-WEAR for “portable
audio products, namely, digital audio players that may be
worn on various parts of the user’s body, such as the head,
wrist, arm, neck or hair.”2

1 Ms. Frazier did not assume responsibility of the application
until the filing of the appeal brief.
2 Application Serial No. 76002076, filed March 16, 2000, alleging
a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth a
date of first use anywhere and a date of first use in commerce of
January 29, 2001.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76002076
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), on the ground that applicant’s mark, as applied
to applicant’s goods, is merely descriptive thereof.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs.
The examining attorney maintains that the prefix “e”
is a well-known abbreviation for “electronic,” and that the
term “wear” is descriptive of audio products designed to be
worn by the user (as reflected in the identification of
goods). The examining attorney contends that the terms “e-
wear” and “wearable electronics” are used interchangeably
within the electronics industry, and that both terms are
merely descriptive of audio products worn by the user. In
support of the refusal, the examining attorney introduced
dictionary definitions of “e” and “wear,” articles
retrieved from the NEXIS database and the Internet, and a
printout listing the results of a search using the GOOGLE
search engine.
Applicant argues that its mark does not forthwith
convey an immediate idea about its goods and that,
therefore, its mark is, at worst, just suggestive when
applied to the goods. Applicant points to various meanings
Ser No. 76002076
3
of the letter “E” other than “electronic.” Applicant also
contends that while the term “wear” may be descriptive as
applied to conventional clothing, it is only suggestive of
non-clothing items, such as applicant’s portable
electronics. The average consumer does not think,
applicant maintains, of electronic products being “worn” as
opposed to be carried on the user’s body. Applicant
questions the probative value of the examining attorney’s
evidence, pointing out that the terms “wearable
electronics” and “e-wear” are often used in the context of
goods (e.g., clothing) completely different from
applicant’s audio products. Moreover, applicant contends,
even if the term “wearable electronics” were viewed as
merely descriptive, it is a leap therefrom to conclude that
E-WEAR is merely descriptive. Also noteworthy, according
to applicant, is the number of articles (over 100) in
printed publications wherein E-WEAR is used as a trademark
to identify applicant’s products. Finally, applicant urges
that any doubt be resolved in its favor. In support of its
position, applicant submitted articles in printed
publications, and third-party registrations of marks that
include the non-disclaimed term “wear” for goods other than
clothing.
Ser No. 76002076
4
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term 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 or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that:
Ser No. 76002076
5
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
The examining attorney has submitted evidence that the
letter “e-” is defined as “electronic; e-mail.”
(www.encarta.msn.com). See also In re SPX Corp., 63 USPQ2d
1592 (TTAB 2002); and In re Styleclick.com Inc., 57 USPQ2d
1445 (TTAB 2000), in both of which cases the Board noted
dictionary definitions that the prefix “E” indicates
“electronic.” The examining attorney also submitted a
dictionary definition showing that the term “wear” is
defined, in relevant part, as “the act of wearing or the
state of being worn.” (www.bartleby.com) The term is
further defined, in relevant part, as “to bear or have upon
the person; to have attached to the body or part of it or
to the clothing; to carry on or as if on the person.”
Ser No. 76002076
6
Webster’s Third New International Dictionary of the English
Language (unabrideged ed. 1993).3
Applicant’s advertisement for its goods, “SV-SD75 e-
wear SD Audio Player,” reads in pertinent part, as follows:
“Put Some Music On! Extremely compact for wearability.”
The advertisement, as well as many of the articles about
applicant’s product, attests to the small size of the
digital audio player, and touts that the goods are to be
worn. This is further borne out by pictures of the product
and by the language of the identification of goods
indicating that the digital audio player “may be worn on
various parts of the user’s body, such as the head, wrist,
arm, neck or hair.” In this connection, one of the
pictures shows the user wearing applicant’s audio digital
player around her neck in the manner of a necklace.
Articles in printed publications and on the Internet
show the following relevant uses of “e-wear” in connection
with electronic devices:
“At the Massachusetts Institute of
Technology, they’ve been researching
‘e-wear’ – wearable electronics and
computers – for years,” says Bajarin.
(www.abcnews.com, December 24, 2004)

3 Judicial notice may be taken of dictionary definitions, and we
have done so with respect to this additional definition.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 76002076
7
Welcome to wearable computers, e-wear
if you will, and digital jewelry.
(Ventura County Star, December 10,
2001)

And jewelry that doubles as a camera,
electronic organizer or music player.
It’s not some future vision – some of
these products are available now, and
more are on the way. It’s being called
wearable electronics, or “e-wear.”
(www.sptimes.com, June 11, 2001)

More fashionable and less expensive is
the e-wear from VIA of Northfield,
Minn. A Pentium PC, a voice-
recognition hardware and four PC-card
slots reside in a waistband that looks
like Bruce Wayne’s bat-belt.
(USA Today, November 22, 1996)

At NAB, Panasonic showcased new digital
media products such as “personal e-
ware” (wearable electronics) and
public-venue display systems.
(Electronic Media, April 30, 2001)

Although many wearable fashions sound
futuristic, some are available today,
and more are on the way. The
crossroads between CE (consumer
electronics) and high fashion couture
is being called wearable electronics or
“e-wear.”
(www.realtytimes.com, March 17, 2006)

The record also includes articles showing uses of “wearable
electronics” or “wearable” for various electronic devices:4

4 The examining attorney also submitted copies of search results
for the key words “wearable electronics” and “e-wear wearable
electronics” generated by the GOOGLE search engine. In some
cases, a webpage shown in the summaries has been submitted, and
we have cited to the webpage; however, in most cases, the
examining attorney did not submit the corresponding webpage.
Although we have considered the GOOGLE summaries, they are
Ser No. 76002076
8
Some technology-minded fashionphiles
say the future is not in accessories,
but rather “wearable electronics” where
the gadget actually becomes part of the
clothing. IBM is developing digital
jewelry, such as a necklace that
doubles as a microphone; earrings with
speakers, so wearers can answer calls;
and watches and bracelets with video
screens.”
(The San Diego Union-Tribune, January
28, 2002)

Sony, meanwhile, is developing a
version of the Memory Stick that’s half
the size of current models. “The
purpose of an ultrasmall type of flash
media is to open the door for wearable
electronics, like a wristwatch camera
or a portable audio device that you
could wear like a piece of jewelry,”
Neiman explains.
(Computer Shopper, November 1, 2001)

So even though the valuable components
of today’s wearable electronics, such
as the mobile phone, will be
unplugged...
(USA Today, June 1, 2001)

Oakley’s line of “wearable electronics”
includes sunglasses with a built-in MP3
player...
(Contra Costa Times (California),
December 22, 2005)

And you thought iPods were the pinnacle
of wearable electronics.
(St. Louis Post-Dispatch, December 21,
2005)

Oakley, the supplier and retailer of
outdoor apparel and accessories,

entitled to limited probative value in the absence of the
corresponding webpages. In re Fitch IBCA, Inc., 64 USPQ2d 1058
(TTAB 2002).
Ser No. 76002076
9
shipped its second-generation MP3
sunglasses with embedded memory, and it
promises to expand its selection of
wearable electronics.
(Twice, December 5, 2005)

Thanksgiving retailers stand to snag
strong sales in televisions, digital
cameras, cell phones and wearable
electronic devices, Goldenberg says.
(San Bernardino Sun, November 24, 2005)

Wearable technology is now hitting the
fashion runway. From sexy thigh
holsters for cell phones to geeky hats
with built-in cellular microphones,
wearable electronics are now available
in the marketplace.
(Rochester Democrat and Chronicle,
November 13, 2005)

This Sunglass Icon will have a
definitive Southern California flavor
as well as a dedicated “store-within-a-
store” concept which will highlight and
feature select Oakley-branded apparel,
accessories and wearable electronic
products.
(PrimeZone Media Network, November 10,
2005)

The decision for Motorola and Oakley to
collaborate is natural; Razrwire is not
the first time either company has tried
creating wearable electronic
technology.
(Sacramento Bee, July 28, 2005)

Samsung intros wearable digital audio
player.
(www.macworld.com, May 9, 2001)

Keep the beat strong and your workout
long with this wearable digital audio
player/exercise sensor.
(www.ebay.com)

Ser No. 76002076
10
The world’s first MP3 Watch is a cool
combo wristwatch and wearable audio
player by Casio that stores up to 33
minutes of MP3 files.
(The Boston Herald, November 23, 2000)

Wearable Digital Audio Player
(www.design.philips.com)

The record establishes that the term “wearable
electronics” refers to small electronic devices, such as
applicant’s, that may be literally worn by the user. The
evidence also shows that the term “e-wear” essentially has
been used as an interchangeable abbreviated version of the
term “wearable electronics.” In view of this evidence, we
find that consumers would equate “e-wear” with “wearable
electronics.” Accordingly, we conclude that the term E-
WEAR sought to be registered is merely descriptive when
applied to digital audio players that may be worn on the
user’s body. The term immediately describes, without
conjecture or speculation, a significant characteristic or
feature of the goods, namely, that applicant’s digital
audio players are wearable electronic devices.
Applicant has submitted numerous articles that make
reference to “e-wear” as a trademark for its goods.
Although these articles may have a bearing on acquired
distinctiveness (if any) of the term sought to be
Ser No. 76002076
11
registered, the evidence is not persuasive in showing that
the term is inherently distinctive.
We also note that some of the articles not
specifically cited in this decision refer to a type of
clothing that actually incorporates electronics into the
clothing fibers, and that such clothing has been referred
to as “e-wear.” We also readily appreciate that the letter
“e” has various meanings, and that the term “wear” often
refers to clothing (although, as shown above, “wear” has
been used in connection with goods other than clothing).
Such uses, however, do not compel a different result in
this case. As noted earlier, that a term may have other
meanings in different contexts is not controlling.
Applicant’s contention that the term “wear” is not
descriptive, but rather is “playfully suggestive,” is not
persuasive. In this connection, applicant submitted third-
party registrations of marks that include the non-
disclaimed term “wear” for goods other than clothing. The
fact that the term “wear” has not been disclaimed in the
context of various non-clothing items is of no significance
herein. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
Ser No. 76002076
12
prior registrations does not bind the board or this
court.”].
We conclude that the term E-WEAR is merely descriptive
of wearable electronics, that is, the specific type of
product identified in the involved application: “portable
audio products, namely, digital audio players that may be
worn on various parts of the user’s body, such as the head,
wrist, arm, neck or hair.”
Decision: The refusal to register is affirmed.