Wednesday, May 04, 2005

Oral Argument Persuades TTAB To Reverse "E-LAMP" 2(e)(1) Refusal

A TTABlog hat-tip to counsel for Applicant in In re Advanced Lighting Technologies, Inc., Serial No. 76422584 (March 9 2005) [not citable]. He persuaded the Board, on oral argument, to change its mind and rule that the mark E-LAMP is not merely descriptive of "metal halide lighting system components, namely, ballasts and electrical controls" (in class 9) and "metal halide lamps and metal halide lighting systems consisting of lamps, ballasts, and electrical controls, sold as a unit" (in class 11).

Photo from Venture Lighting brochure

As previously discussed here, in its original decision the Board affirmed the PTO's mere descriptiveness refusal, but as noted here, that decision was vacated in order to give Applicant the oral hearing it had requested.

The Examining Attorney relied on dictionary definitions of the prefix "E-", on Internet webpages, and on NEXIS excerpts, in contending that E-LAMP "merely describes to consumers that applicant's goods are lamps that contain an electronic component."

Applicant argued that the "E-" prefix "means information or functions involving computers," noting that the definitions of "E-" relied on by the PTO refer to computers or the Internet.

"During the oral hearing, applicant's counsel made a particularly cogent argument that while the prefatory letter "E" is readily seen as connoting "electronic" in the context of the Internet, it is not perceived this way as used in connection with electronic devices ('gadgets' or 'gizmos,' as characterized by applicant's counsel)."

The Board was therefore "not persuaded that the letter 'E' is a readily recognized shorthand for 'electronic' apart from functions involving the Internet or computers."

"... where the popular media, dictionary definitions or earlier Board decisions indicate that the 'E' prefix means the 'electronic or Internet nature of an item or service...' (In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)), it may well be most accurate to think of Internet as a clarifying appositive modifying the word 'electronic,' and not the broader alternative argued by the Trademark Examining Attorney."

The Board therefore could not conclude, "on the facts of this case," that E-LAMP is "shorthand for 'electronic lamp' in the context of lamps (or light bulbs) without electronic components." It frankly admitted that some doubt exists, but it resolved that doubt in favor of the applicant and in favor of publication for opposition.

Two particular points raised doubt: (1) Applicant's E-LAMP system is described at the website of Venture Lighting -- apparently a company related to Applicant -- as "A Revolutionary Electronic System From the Leaders of Lighting Innovations." The Board explained cryptically that "while components of applicant's lighting systems may have electronic components, the lamps, or light bulbs, clearly do not." (The TTABlog wonders, what about the "controls?"); and (2) Several years ago a type of light bulb called an E-lamp was available, but "it would appear that this product was not particularly successful in the commercial residential market since there is no evidence of the use of 'E-lamp' since the early 1990's." The Board concluded that this limited evidence failed to establish that purchasers of applicant's goods would understand "E" to mean "electronic."

Text ©John L. Welch 2005. All Rights Reserved.


Post a Comment

<< Home