Tofasco of America, Inc.

Trademark Trial and Appeal Board

Jun 24, 2013

No. 85069228 (T.T.A.B. Jun. 24, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tofasco of America, Inc.
________

Serial No. 85069228
_______

Reid Eric Dammann of Musick Peeler LLP for Tofasco of
America, Inc.

Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______

Before Cataldo, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Tofasco of America, Inc. has applied to register the
mark IPEN, in standard character form, on the Principal
Register for the following goods and services:
“digital pen” in International Class 9; and

“online retail store services featuring computer
peripherals, namely, digital pens” in
International Class 35.1

1 Application Serial No. 85069228 was filed on June 23, 2010
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce in connection with the recited goods and
services.

Ex Parte Appeal No. 85069228

2

The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of a feature or
quality of applicant’s goods and services. When the
refusal was made final, applicant appealed. Applicant and
the examining attorney filed briefs on the issue under
appeal.2
A mark is merely descriptive if “it forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976) (emphasis added). See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
The question is not whether someone presented only with the
mark could guess the products listed in the description of
goods. Rather, the issue is whether someone who knows what

2 With its appeal brief, applicant has attached approximately
fifty pages of exhibits consisting of materials previously made
of record during prosecution of the involved application.
Applicant is reminded that the application file is before the
Board when it decides an appeal, and there is no need to resubmit
materials that are already in the file. See In re SL&E Training
Stable Inc., 88 USPQ2d 1216, 1220 n. 9 (TTAB 2008). It is of far
more utility to the Board for the applicant and examining
attorney to provide citations directly to the record and, when
there are a large number of attachments to an Office action or
response, to the specific page number where the attachment may be
found.
Ex Parte Appeal No. 85069228

3
the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v.
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); and In re Patent &
Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
If, however, when goods or services are encountered
under a mark, a multistage reasoning process, or resort to
imagination, is required in order to determine the
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., 200 USPQ at 218; and In re
Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992). To the extent
that there is any doubt in drawing the line of demarcation
between a suggestive mark and a merely descriptive mark,
such doubt is resolved in applicant’s favor. In re Atavio,
25 USPQ2d at 136. The examining attorney bears the burden
of showing that a mark is merely descriptive of the
identified goods or services. See In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 21567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
With his Office actions, the examining attorney
submitted a dictionary definition from dictionary.com of
“pen.” Based upon this definition, “pen” may be defined as
Ex Parte Appeal No. 85069228

4
“any of various instruments for writing or drawing with ink
or a similar substance.” In addition, the examining
attorney made of record an article from LuckyRegister.com
excerpted below:3
POPULAR DOMAIN NAMES PREFIXES – “E” AND “I”
The two primary prefixes are “E” for electronic,
and “I” for Internet. Both indicate the word or
phrase to be accessible online. Because of that,
in terms of branding, an I or E combined with a
commercial term are highly desirable. …

In addition, we hereby take judicial notice of a definition
at acronymfinder.com that “I” may be defined, inter alia,
as a shorthand for “Internet.”4
Applicant, for its part, submitted a screenshot from
the chacha.com webpage, containing the following definition
of “digital pen” – “a digital pen is a battery-operated
writing instrument that allows the user to digitally
capture a handwritten note.” Applicant also submitted a

3 The examining attorney further made of record a Wikipedia.org
article discussing “Internet-related prefixes” including “E,”
“cyber” and “virtual;” third-party registrations reciting digital
pens among the listed goods; and an Internet article from
translegal.com discussing the iPad.
4 The Board may take judicial notice of online dictionary
definitions if the dictionary is readily available and
verifiable. See, e.g., In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006), where the Board took judicial notice of the Encarta
Dictionary because it was a widely known reference that was
readily available in specifically denoted editions via the
Internet and CD-ROM, holding that it was “the electronic
equivalent of a print publication and applicant may easily verify
the excerpt.”

Ex Parte Appeal No. 85069228

5
Wikipedia.org article, excerpted below, discussing digital
pens:
Digital pen

A digital pen is an input device which captures
the handwriting or brush strokes of a user, and
digitizes them so that they may be downloaded to
a computer and displayed on its monitor. The
data can then be interpreted by handwriting
software (OCR) and used in different applications
or just as graphics.

A digital pen is generally larger and has more
features than a stylus. Digital pens typically
contain internal electronics, and have features
such as touch sensitivity, input buttons, memory,
Bluetooth transmission capabilities, and
electronic erasers. …

The above evidence supports a finding that IPEN is an
abbreviation for “Internet pen.” The evidence further
supports a finding that “digital pen” is recognized as a
term describing an electronic input device that may be used
in connection with a computer in a manner similar to that
of a traditional ink pen. Turning to applicant’s recited
goods and services, we must determine whether IPEN or
“Internet pen” merely describes a function, feature or
characteristic of digital pens or online retail stores
featuring digital pens.
The examining attorney argues (brief, unnumbered p. 3)
that
Applicant has merely taken the “I” prefix which
signifies the Internet and merely added to it the
Ex Parte Appeal No. 85069228

6
generic term “pen.” And it is now well
established that when a mark consists of this
prefix coupled with a descriptive word or term
for Internet-related goods or services, then the
entire mark may be considered merely descriptive.

However, the evidence of record fails to establish that a
digital pen is an “Internet pen” or that the mark IPEN
merely describes a function, feature or characteristic of
applicant’s digital pens or retail store services featuring
digital pens. In other words, while the evidence supports
a finding that IPEN is the equivalent of “Internet pen,”
there is no evidence that such term is synonymous with the
term “digital pen” or merely describes an attribute the
recited goods and services.
The examining attorney relies upon this tribunal’s
decision in In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001)
in support of the refusal to register. In that case,
however, the evidence made of record by the examining
attorney clearly established that the mark ITOOL is the
equivalent of “Internet tool” and that such term “not only
describes a wide array of software and related services,
but also aptly describes applicant’s goods and services.”
Id. at 1304. Further, this tribunal’s decision in the
following non-precedential decision, while not binding,
nonetheless is instructive: In re PSI Systems, Inc., Ex
Parte Appeal No. 78648563 (TTAB August 21, 2007) (evidence
Ex Parte Appeal No. 85069228

7
of record clearly establishes that iPOSTAGE is equivalent
of “Internet postage” and such term merely describes a
feature of the recited goods and services).
In the case before us, on the other hand, the evidence
of record simply indicates that IPEN is the equivalent of
“Internet pen,” but not that such term merely describes a
function, feature or characteristic of the recited goods
and services. As a result, we find that the evidence fails
to support the refusal of registration under Section
2(e)(1).
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, e.g., 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 examining attorney’s refusal of
registration is reversed. Accordingly, the involved
application will be forwarded for publication for
opposition in due course.