Wednesday, April 27, 2011

Finding 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of "eCopy" for Electronic Copying Software

With little fanfare, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of eCopy in standard character form, finding it merely descriptive of "software discs and associated apparatus for enabling the scanning and electronic distribution of documents over computer networks and touch screen control panels for interfacing with such software." Applicant sought registration under 2(f) but its evidence of acquired distinctiveness fell short. In re eCopy, Inc., Serial No. 77682275 (April 15, 2011) [not precedential].

Applicant argued that its evidence "establishes that the mark is not merely descriptive," but the Board pointed out that Applicant applied under Section 2(f) and did not argue inherent distinctiveness during prosecution. The Board therefore focused on the sufficiency of the 2(f) evidence.

Numerous Internet articles and advertisements showed that the term "ecopy" is used by many third parties as a shorthand term for "electronic copy." The "overwhelming" evidence convinced the Board that eCopy is "at the very least, highly descriptive of the goods." The Board noted that "[t]his conclusion is consistent with Board precedent, in which we have recognized the prefix 'e' as a shorthand for 'electronic.'"

With such a highly descriptive mark, "applicant would need a commensurate high degree of evidence to show that its mark has acquired distinctiveness for its goods."

Applicant's 2(f) evidence of sales and advertising was not limited to products sold under the subject mark. Moreover, the evidence lacked context vis-a-vis the industry. Consequently, it had limited probative value.

Applicant also submitted "voluminous" evidence in the form of articles and press coverage, but the evidence was "largely repetitive" and did not clearly use "eCopy" as a source identifier. Moreover, Applicant itself used the term descriptively.

The Board found that "applicant as well as others use the term 'eCopy' (as well as 'ecopies') in a non-source-identifying manner. Applicant has not shown substantial and exclusive use."

And so the Board ruled that Applicant did not meet its burden of proof, and the Board affirmed the refusal to register.

Text Copyright John L. Welch 2011.


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