The Trademark Act of 1946, codified as 15 U.S.C. §1051 et. seq., regulates the registration of federal trademarks in the United States, and the United States Patent and Trademark Office (USPTO) is the government agency in charge of this registration process. Federal courts decisions and decisions by the Trademark Trial and Appeal Board (TTAB) interpret provisions of the Trademark Act, some of them becoming precedent decisions. According to the United States Trademark Act (TMA) only distinctive marks can be registered. A descriptive trademark cannot be registered because they are not inherently distinctive. Descriptive marks can only be registered if they have acquired a secondary meaning. An interesting question arises regarding trademarks descriptive of Internet services; is the letter "I" or "i" descriptive of these services, and can it be registered in the United States?
A descriptive trademark is a mark that directly describes, instead of merely suggest, a characteristic or quality of the product or service. For instance, the mark "QualityPen" for a line of pens could not be registered because it is descriptive of the product. A descriptive mark that acquires a secondary meaning, however, can be registered in the U.S when consumers associate that mark with a particular producer or service, rather than the underlying product or service. In Zatarain''''''''s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), the court created a four-prong test to determine whether a mark has acquired secondary meaning: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term''''''''s use; and (4) results of consumer surveys. As the four-prong test suggests, a descriptive mark with secondary meaning requires use in commerce before it could be registrable.
The Trademark Trial and Appeal Board (TTAB) has held In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986) and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) that the test to determine whether a mark is descriptive is "whether it [the trademark name] immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or is intended to be used." To be descriptive, a mark does not need to describe each feature of the product or service. A mark descriptive of a single and significant quality or feature of the product or service is enough to be considered descriptive. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
The letter "I" or "i" is commonly associated with Internet products or services; is the use of this letter for a mark offering Internet services or products considered a descriptive mark? The TTAB held that the mark "IATMglobal" was descriptive, and not able to be registered, for a company offering international ATM services on the Internet. Although this decision is not a precedent decision, it is suggestive of the USPTO''''''''s approach on the use of the letter "I" or "i" on trademarks offering Internet products or services.
In re TRM Corporation, 2002 TTAB Lexis 659, the TTAB was to decide whether the USPTO had properly denied registration of the mark IATMglobal for "automatic teller machine services" to be offered internationally and over the Internet. The USPTO Trademark Examining Attorney held that the mark was descriptive of the services to be offered and denied registration based on 15 U.S.C. §1052(e)(1). The mark holder appealed this decision before the TTAB.
The TTAB affirmed the examining attorney"s decision by stating that the letter "i" was a common acronym for the word Internet; the word ATM was the common abbreviation of "automatic teller machines;" and the word "global" was commonly used to describe international products or services, and used as synonym of the word international. Thus, the mark IATMglobal was descriptive of the services to be offered. The TTAB cited Internet companies'''''''' names such as iPrint.com, I-notebooks.com, and oracale8i.com, to show how this letter is associated to Internet service companies. The TTAB held that "it is well established that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used or intended to be used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977)."
The TTAB concluded that "when used in connection with applicant''''''''s services, the terms IATM and IATMGLOBAL would immediately describe, without conjecture or speculation, a significant feature or function of applicant''''''''s services as discussed above. Nothing would require the exercise of imagination, cogitation, mental processing or gathering of further information in order for purchasers of and prospective customers for applicant''''''''s services to readily perceive the merely descriptive significance of the terms IATM and IATMGLOBAL as they pertain to automated teller machine services."
This holding clearly shows the USPTO''''''''s tendency to consider the letter "I" or "i" as descriptive of Internet services or products. Therefore, entrepreneurs searching for registrable marks for their Internet products or services should consider this pitfall, unless they use the mark first and the mark acquires some secondary meaning.