A decision by the United States Trademark Trial and Appeal Board held that the word "E" or "e" may be descriptive of Internet businesses. This article complements a previously published article in which we briefed a United States Trademark Trial and Appeal Board''''''''s decision that considered the word "I" or "i" as descriptive of Internet products or services. Internet businesses or those offering online products or services should be aware of the Trademark Trial and Appeal Board"s view if they wish to register marks that include the prefix or suffix "i" or "e."
The United States Trademark Act (TMA) does not allow registration of trademarks that describe the products or services offered. A term is descriptive of goods or services within the meaning of the TMA §2(e)(1) when it describes an ingredient, quality, characteristic or features that directly conveys information about the nature, function, purpose or use of the good or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
In Re Cairo, 2001 TTAB Lexis 675, the TTAB affirmed the U.S. Trademark Office''''''''s denial of registration of the mark "ECertified" for a company "providing certification of delivery of e-mail messages and e-mail messages delivered electronically via the world wide web." TTAB held that the mark "ECertified," when used in connection with the services offered, was descriptive of online services.
After the examining attorney denied registration of the mark "ECertified," the applicant appealed before the TTAB. On appeal, the applicant argued that although the word "E" or "e" is commonly associated to e-businesses and e-commerce, in this particular case the mark could be registered because it was a unitary name as opposed to a term united by a hyphen, such as the term e-business. The applicant argued that the term "ECertified" was merely suggestive instead of descriptive. The applicant claimed that elimination of the hyphen after the word "E" required a first step mental process to separate terms before people could recognize that the word had a meaning. The examining attorney and the TTAB found this argument unpersuasive; instead, the TTAB found that "the adjectival term "e" used with or without a hyphen is a prefix meaning ''''''''electronic.'''''''' Therefore, applying this term "e" as suffix to the word certified requires no mental manipulation because applicant''''''''s services are electronic certification services. The TTAB further held that "[A] mark which combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive [sic] meaning. In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985). Though the applicant states that the outcome is different when the terms combined are adjectives, the analysis is the same. [See, e.g., In re Pennzoil Products Co., 20 USQP2d 1753 (TTAB 1991).] The combination of descriptive terms in the mark ECERTIFIED does not create a non-descriptive term. Here, "E" is defined as "electronic"; "CERTIFIED" refers to the proof that the mail has been delivered. When considering descriptiveness in relation to the applicant''''''''s identified services, ECERTIFIED merely describes a feature of those services, namely, providing electronic certification of delivery of electronic mail."
In other words, the TTAB considered that the two terms in the word "ECertified" were descriptive and that when combined in a unitary term, they create a unitary mark with the same descriptive meaning. Quoting from a previous case, the TTAB said: "[W]ith each passing day, the Internet becomes more pervasive in American daily life. Many Internet words, such as "e-mail" and "e-commerce," have made their way into the general language. See: Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) [E-TICKET is generic for computerized reservation and ticketing of transportation services] ... We have no doubt that in the year 2000, the meaning of the "e-" prefix is commonly recognized and understood by virtually everyone as a designation for the Internet..."
Thus, it is clear now that for the U.S. and Trademark Office and TTAB, prefixes such as "e" and "i" are descriptive of Internet businesses and Internet goods or services, whether they are written with a hyphen or not.