Thursday, July 25, 2013

Test Your TTAB Judge-Ability: Is IPEN Merely Descriptive of Digital Pens?

The PTO issued a Section 2(e)(1) refusal to register the mark IPEN, deeming it to be merely descriptive of digital pens and online retail store services featuring digital pens. On appeal, the Board found that IPEN "is the equivalent of 'Internet pen,'" but does it immediately describe a function, feature, or characteristic of the identified goods and services? How do you think this came out? In re Tofasco of America, Inc., Serial No. 85069228 (June 24, 2013) [not precedential].

Wacom digital pen

The Examining Attorney relied on a dictionary definition of "pen" and the Board took judicial notice that "I" is shorthand for "Internet." Applicant submitted a webpage defining digital pen as a "battery-operated writing instrument that allows the user to digitally capture a handwritten note." A Wikepedia entry (here) described a digital pen as an  input device that captures the handwriting strokes of a user and digitizes them for display on a computer monitor.

The Board found that IPEN is an abbreviation for "Internet pen," and that a "digital pen" is an electronic input device that may be used with a computer in the manner of a traditional ink pen.

The question, then, was whether IPEN or "Internet pen" merely describes a function, feature or characteristic of digital pens or online retail store services featuring digital pens.

The Examining Attorney argued that applicant "has merely taken the 'I' prefix which signifies the Internet and merely added to it the generic term 'pen.'" It is well settled, the Examining Attorney argued, that when the "I" prefix is coupled with a descriptive term for Internet-related goods or services, the resulting mark is considered to be merely descriptive.

However, the Board concluded that the PTO had failed to show that a digital pen is an "Internet pen," or that the mark IPEN merely describes a function, feature or characteristic of the involved goods or services.

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 of the recited goods and services.

Finally, the Board noted that any doubt as to mere descriptiveness must be resolved in favor of the applicant, and in such a case the application must be passed to publication so that it may be opposed by anyone who believes the mark is descriptive may opose registration.

And so the Board reversed the refusal.

Read comments and post your comments here.

TTABlog comment: Note that the Board distinguished this case from its ITOOL and iPOSTAGE decisions, where the PTO's proofs were more to the point.

Text Copyright John L. Welch 2013.


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