Thursday, December 02, 2004

TTAB E-jects Three "E"-Prefix Marks as Merely Descriptive

"E" prefix marks are regularly "e-jected" by the Board under Section 2(e)(1) on the ground of mere descriptiveness, and it happened again to the applicants in three recent cases.

In In re EOS GmbH Electro Optical Systems, Serial Number 75722993 (October 22, 2004) [not citable], the Board affirmed a refusal to register E-MANUFACTURING for rapid prototyping equipment and related training and educational services.

Nexis evidence established that rapid prototyping involves a "highly automated computer-controlled system" used in the "manufacturing" of prototypes. The Board took judicial notice that the prefix "e" indicates a "computer-based version of some traditionally nonelectronic term, as e-mail, e-commerce, and e-money." It concluded that E-MANUFACTURING" describes a significant function of rapid prototyping apparatus that enables the computer-controlled manufacture of prototypes. The term also describes the subject matter of applicant's training and consulting services in the use of such apparatus. "

Applicant argued that the uses of "e-manufacturing" in the PTO's evidence related to business activities rather than manufacturing processes, but the Board brushed that point aside, observing that a term need not be in common usage to be merely descriptive. Moreover, even if Applicant were the first to use the term "e-manufacturing," that is not dispositive "where, as here, the term unquestionably projects a merely descriptive connotation."

In re Envirosolve Corp., Serial No. 76436149 (October 8, 2004) [not citable] involved the mark ECOC for "software which supports the manual entry of data into a designated form which can be transmitted and/or stored on computer based media." The prefix "E", of course, stands for electronic, and "COC" is an established abbreviation for "chain of custody." According to the Board, the term ECOC:

"would be immediately understood by the relevant consumers . . . as conveying information about a significant feature, function or purpose of applicant's identified goods -- which is to provide or facilitate the electronic chain of custody of data or information."

And in In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (November 15, 2004) [not citable], the Board pulled the plug on this applicant's attempt to register the mark E-LAMP for metal halide lamps and lighting systems.

The PTO's evidence showed that an E-LAMP is a light bulb that includes an electronic component. Applicant argued that "the 'E' prefix would be understood by average purchasers as relating to computers or the Internet." The Board, however, pointed out that "E" is not limited to this meaning, and it noted that third-party advertising describes Applicant's E-LAMP product as a "Revolutionary Electronic System."

TTABlog Update: On January 13, 2005, the Board vacated the E-LAMP decision because it had not provided an opportunity for oral argument (which Applicant had requested). On April 21, 2005, after hearing oral argument, the Board reversed the refusal to register, as discussed here.


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