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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA111352
`ESTTA Tracking number:
`11/27/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`76002076
`PANASONIC CORPORATION OF NORTH AMERICA
`E-WEAR
`MORTON AMSTER
`AMSTER, ROTHSTEIN & EBENSTEIN
`90 PARK AVENUE
`NEW YORK, NY 10016
`UNITED STATES
`ptodocket@arelaw.com
`Appeal Brief
`DOCS1-#354611-v1-Appeal_Brief__E-WEAR.pdf ( 10 pages )(72541 bytes )
`Holly Pekowsky
`ptodocket@arelaw.com
`/Holly Pekowsky/
`11/27/2006
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re Application of: Panasonic Corporation Of :
`North America
`
`Serial No.: 76/002,076
`
`Filed: March 16, 2000
`Trademark: E—WEAR
`
`Law Office: 116
`
`Attorney: John Dwyer
`
`(FILED ELECTRONICALLY)
`
`BRIEF FOR APPELLANT
`
`Hon. Commissioner:
`
`Panasonic Corporation Of North America (“Applicant”) submits this Brief on
`
`Appeal pursuant to 37 C.F.R. § 2.142, from the Final Office Action dated March 27, 2006
`
`finally refusing registration of the instant mark based upon mere descriptiveness
`
`pursuant to Section 2(e)(1) of the Trademark Act. A timely Notice of Appeal was filed
`
`on September 6, 2006.1
`
`Applicant maintains that its mark E—WEAR as applied to portable audio products,
`
`namely, digital audio players that may be worn on Various parts of the user's body, such
`
`as the head, wrist, arm, neck or hair is at most suggestive.
`
`This brief is submitted in triplicate. Applicant hereby waives oral argument.
`
`In a
`1 At the same time Applicant filed its Notice of Appeal, it also filed a Request For Reconsideration.
`communication from the Examining Attorney dated September 28, 2006, the Request was granted with
`respect to an unrelated issue but denied with respect to the Section 2(e)(1) refusal. The Board issued an
`Order resuming the Appeal on October 2, 2006.
`3546ll.l
`
`

`
`I.
`
`Introduction
`
`A mark is merely descriptive only if it immediately describes or conveys to one
`
`who is unfamiliar with the product
`
`its function or qualities.
`
`In re: Hutchinson
`
`Technology, Inc., 852 F.2d 552, 555 (Fed. Cir. 1988); In re.‘ DC Comics, Inc., 215 U.S.P.Q.
`
`394, 396 (C.C.P.A. 1982).
`
`In contrast, “[a] term is suggestive if it requires imagination,
`
`thought and perception to reach a conclusion as to the nature of the services.”
`
`Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d Cir. 1976), (quoting
`
`Stix Products,
`
`Inc. v. United Merchants and Manufacturers, 295 F. Supp. 479, 488
`
`(S.D.N.Y. 1968)).
`
`As discussed more fully below, Applicant’s E—WEAR Mark does not “forthwith
`
`convey an immediate idea” of Applicant’s portable audio products. Therefore, the Board
`
`should reverse the Examining Attorney’s refusal to register Applicant’s Mark on the
`
`grounds of descriptiveness.
`
`II.
`
`Evidence of Third Party Registrations In Which The
`WEAR Element Is Not Disclaimed Support Applicant’s
`Position that E-WEAR Is At Most Suggestive
`
`Although “wear” may be descriptive as applied to conventional clothing such as
`
`shirts and sweaters, it is merely suggestive of non—clothing items, such as Applicant’s
`
`portable electronics. Applicant’s position on this matter is supported by the fact that
`
`there are numerous third party registrations on the Principal Register for WEAR-
`
`formative marks in connection with goods other than clothing,
`
`in which the WEAR
`
`element is not disclaimed. See Institut Nat'l Des Appellations D'Origine v. Vinters Int’l Co.,
`
`958 F.2d 1574 (Fed. Cir. 1992)
`
`(third party registrations in which term disclaimed
`
`3546ll.l
`
`

`
`evidence that term is descriptive); Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d
`
`1560, 1565 (Fed. Cir. 1987) (same). Specifically:
`
`1.
`
`1997 for
`Registration No. 2,117,037 of November 25,
`MENSWEAR covering men’s toiletries, namely cologne;
`
`the mark
`
`Registration No. 3,046,982 for the mark TUNEWEAR covering, among
`other things, specialty holsters for carrying cellular phones, MP3 players
`and personal digital assistants;
`
`Registration No. 3,120464 of July 25, 2006 for the mark MOUNTAIN
`HARD WEAR covering all purpose sports, athletic and carrying bags, tote
`bags, sports packs,, waist packs, backpacks, fanny packs and drawstring
`pouches;
`
`Registration No. 2,624,844 of September 24, 2002 for the mark DAYWEAR
`covering cosmetics, namely lotions and cremes for the face;
`
`Registration No. 2,831,227 of April 13, 2004 for the mark WHISPER WEAR
`covering, among other things, shoulder bags adapted for use with breast
`feeding pumps and breast feeding supplies;
`
`Registration No. 3,012,284 of November 1, 2005 for the mark ADVANCED
`WEAR covering nail enamel;
`
`Registration No. 2,498,361 of October 16, 2001 for the mark HEAD WEAR
`covering, among other things, hair spray and hair wax;
`
`Registration No. 2,716,081 of May 13, 2003 for the mark PCWEAR
`covering, among other things, portable computers designed to be carried or
`worn somewhere on the body;
`
`Registration No. 2,696,632 of March 11, 2003 for the mark NEWSWEAR
`covering tote bags, backpacks and day packs namely vest packs for use in
`photography and videography;
`
`10.
`
`11.
`
`Registration No. 2,716,081 of October 17, 2000 for the mark NAIL WEAR
`covering nail enamel; and
`
`Registration No. 2,029,016 of January 7, 1997 for the mark MINIWEAR
`covering blankets.
`
`3546ll.l
`
`

`
`Copies of print outs of these registrations from the Patent and Trademark Office’s
`
`website were annexed as Appendix 2 to Applicant’s September 6, 2006 Request For
`
`Reconsideration.
`
`III.
`
`The Materials Submitted By The Examiner Are Consistent With
`Applicant’s Position That Its E WEAR Mark Is At Most Suggestive
`
`1.
`
`The Dictionary Definition of WEAR Supports Applicant’s
`Argument That Its Mark Is At Most Suggestive
`
`In the Office Action dated September 13, 2000, the Examining Attorney cited to a
`
`dictionary definition of “wear” as “clothes suitable for a particular purpose or clothes of a
`
`stated type” in support of the holding that Applicant’s Mark is descriptive. This holding
`
`is misplaced since Applicant’s products are clearly not clothing.
`
`Perhaps realizing the weakness of this holding, the Examining Attorney,
`
`in the
`
`Office Action dated March 27, 2006, went on to hold that Applicant’s Mark is descriptive
`
`based on a definition of “wear” as “to carry or have habitually on the person.” However,
`
`it is respectfully submitted that this definition only further supports Applicant’s argument
`
`that its mark is suggestive. As a preliminary matter, in this definition, “wear” is clearly
`
`being used as a verb, while there is nothing to suggest that Applicant intends to use
`
`“wear” as a verb.
`
`In any event, while a person habitually carries items which serve a
`
`purely functional purpose, such as glasses, or a decorative purpose, such as a hair clip,
`
`the term is at most playfully suggestive as applied to Applicant’s entertainment products.
`
`See In re TBG,
`
`Inc., 229 U.S.P.Q. 759 (T.T.A.B. 1986) (“SHOWROOM ONLINE” not
`
`descriptive; since applicant’s services consisted of the provision of product information
`
`rather than the display of products for sale, the mark’s literal definition was inapplicable
`
`to applicant’s services);
`
`In re Shop-Vac Corp., 219 U.S.P.Q. 470 (T.T.A.B. 1983)
`
`3546ll.l
`
`-4-
`
`

`
`(reversing Examining Attorney’s refusal to register based on mere descriptiveness the
`
`mark WET/DRY BROOM as applied to electric vacuum cleaners because “applicant’s
`
`product, whether a true vacuum cleaner or not, neither looks like a broom nor operates
`
`like a broom as that term is normally understood.”).
`
`2.
`
`The Examining Attorney’s Reliance on Acron3@ Finder Is Misplaced
`
`In support of the descriptiveness rejection,
`
`the Examining Attorney,
`
`in the
`
`September 13, 2000 Office Action, cited to the Acronym Finder, which indicates that “E—”
`
`means “electrical; electronic.”
`
`There are several flaws to the Examiner’s reasoning. First, the Acroynm Finder
`
`also links
`
`the letter
`
`“E” with such diverse words as “enlightenment,” “ecstasy”
`
`“entertainment television”, and “element.” This vastly decreases the likelihood that
`
`consumers will associate the “E” in Applicant’s Mark with electronic products, as opposed
`
`to, for example, thinking that Applicant is making a playful reference to “enlightenment”
`
`or “ecstasy.”
`
`Second, and on a related note, the mere fact that “E” may be understood to mean
`
`“electronic” in connection with certain phrases (such as “e—commerce”) does not mean
`
`that “E” will be understood to mean “electronic” in connection with the composite mark
`
`E—WEAR. See, Assoc. of Co—Operative Members, Inc. v. Farmland Indus., 684 F.2d 1134,
`
`1140 (5th Cir. 1982) (“the whole, in trademark law, is often greater than the sum of its
`
`parts” and thus a mark should be considered in its entirety); In re Hester, 230 U.S.P.Q.
`
`797 (T.T.A.B. 1986)
`
`(THIGHSTIX not descriptive of poultry product even if the
`
`individual elements might be).
`
`3546ll.l
`
`

`
`IV.
`
`The Third Party Articles Submitted By The Examining Attorney
`Do Not Evidence That Applicant’s E-WEAR Mark Is Descriptive.
`
`None of the Articles submitted by the Examining Attorney support the premise
`
`that Applicant’s Mark is merely descriptive.
`
`1.
`
`References To “Wearable Electronics” Do
`
`Not Evidence That E-WEAR is Descriptive
`
`As a preliminary matter, the majority of these articles (both in the February 19,
`
`2002 and March 27, 2006 Office Actions) refer to “wearable electronics,” not Applicant’s
`
`Mark, E-WEAR.
`
`Even if “wearable electronics” were descriptive (which Applicant
`
`disputes), it is an unjustified leap of logic to presume that E-WEAR is descriptive. The
`
`same may be said with respect
`
`to the Examining Attorney’s Google searches for
`
`“wearable digital audio players” (see attachments 163-184 of the Examining Attorney’s
`
`Office Action of March 27, 2006).
`
`2.
`
`References To Goods Other Than Those Covered By Applicant’s
`Mark Are Irrelevant To Whether Applicant’s Mark is Descriptive
`
`The vast majority of articles which refer to “wearable electronics” do so in the
`
`context of products which are clearly different from Applicant’s products, and therefore
`
`do not establish that "wearable electronics” is descriptive as applied to Applicant’s
`
`products. See J. Wiss & Sons Co. v. W. E. Bassett Co., 462 F.2d 567 (C.C.P.A. 1972)
`
`(TRIM may be descriptive as to nail clippers, but not as to nail files).
`
`For example, in the following articles from the Examining Attorney’s March 27,
`
`2006 Office Action, the term “wearable electronics” is used in connection with products
`
`other than Applicant’s products:
`
`0
`
`February 21, 2006 article from The Richmond Times Dispatch refers to
`“wearable electronics” in connection with “health—monitoring devices for
`
`3546ll.l
`
`-6-
`
`

`
`soldiers...to measure impact trauma” and “a shield against electro—magnetic
`radiation”;
`
`December 26, 2005 article from The Boston Globe refers to “wearable
`electronic device that restores movement and strength to limbs partially
`paralyzed by stroke or other neurological problems”;
`
`December 22, 2005 article from Contra Costa Times and a December 5,
`
`2005 article from Twice, both which refer to “wearable electronics” in
`
`connection with sunglasses (see also July 28, 2005 article from Sacramento
`Bee entitled “Tuned In Motorola steps into spotlight with a Blue—tooth—
`equipped module on sunglasses);
`
`November 13, 2005 article from The Rochester Democrat and Chronicle in
`connection with hats with built in cellular microphones and thigh holsters
`for cell phones; and
`
`June 6, 2005 article in Daily Deal/The Deal, which references “wearable
`electronics” in connection with electronics incorporated into textiles.
`
`The few articles in the March 27, 2006 Office Action which reference “e—wear,”
`
`are also not relevant on the issue of descriptiveness, since they appear in connection with
`
`clothing, rather than Applicant’s Products. Specifically:
`
`November 24, 2003 article from The Miami Herald which refers to “e—wear”
`as “clothes made to carry your high—tech gear”;
`
`September 23, 2001 reference to “e—wear” in connection with a vest;
`
`attachment 128, which uses “e—wear” in connection with “electronically
`embedded clothing”;
`
`attachment 132, which uses “e—wear” in connection with “clothing that is
`beyond our wildest imaginations”;
`
`attachment 141, which refers to “e—wear” in connection with a jacket;
`
`attachment 144, which refers to “e—wear” in connection with a jacket;
`
`attachment 146, which refers to “e—wear” in connection with “intelligent
`apparel” for healthcare workers; and
`
`attachment 148, which defines “e—wear” as intelligent apparel that fuses
`fashion with communication technology.
`
`3546ll.l
`
`-7-
`
`

`
`Similarly, the vast majority of articles in the Examiner’s February 18, 2002 Office
`
`Action refer to “wearable electronics” in the context of clothing. For example:
`
`April 9, 2001 article from Newsweek which references “wearable electronic
`garments — jackets which a GSM mobile and aMP3 player in special
`pockets, with a remote control on the front flap of the jacket and a
`microphone in the collar”;
`
`January 28, 2002 article from The San Diego Union -Tribune, which
`references “’wearable electronics’ where the gadget actually becomes part
`of the clothing”;
`
`December 10, 2001 article which references “wearable electronics” in
`connection with “sleeves that monitor blood pressure”;
`
`October 16, 2001 article from The Gold Coast Bulletin which uses “wearable
`electronics” in connection with “wireless connectivity woven into clothing”;
`
`October 13, 2001 article from St. Petersburg Times which discusses “smart
`fabrics”;
`
`September 7, 2001 article from The Times Educational Supplement which
`uses wearable electronics in connection with “conductive fibres”;
`
`June 15, 2001 article from Internet World which references wearable
`
`electronics in connection with shoes; and
`
`January 14, 2002 article which references wearable electronics
`connection with “intelligent clothes.”
`
`in
`
`Once again, even if “wearable electronics” were descriptive as applied to some
`
`goods (in this case, clothing),
`
`this does not evidence that it
`
`is descriptive as to the
`
`portable audio products covered by Applicant’s Mark. See Inmuno Vital, Inc. v. Golden
`
`Sun, Inc., 49 F. Supp. 2d 1344 (S.D. Fla. 1997) (summary judgment denied because jury
`
`could find VIDA VITAL descriptive as to nutritional supplements but not as to herbal
`
`teas).
`
`3546ll.l
`
`

`
`3.
`
`The Overwhelming Number of Articles Refer To
`E—WEAR In Connection With Applicant’s Products,
`Undermining A Claim of Descriptiveness
`
`The few, if any, third party articles submitted by the Examining Attorney which
`
`suggest that E—WEAR is anything but suggestive are completely outweighed by the
`
`numerous articles — over 100 in fact — in which E—WEAR is used as a trademark to identify
`
`Applicant’s products (see Exhibit 1 to Applicant’s February 9, 2006 Response). See Ply
`
`boo America, Inc. v. Smith & Fong Co., 51 U.A.P.Q.2d 1633 (T.T.A.B. 1999) (PLY BOO for
`
`bamboo laminate flooring and plywood made of bamboo not merely descriptive where
`
`the majority of news articles utilized PLY B00 in connection with applicant’s products).
`
`In the instant case, as in Plyboo, only a “distinct minority” of the total articles in the
`
`record do not reference Applicant, and therefore, this is further evidence that Applicant’s
`
`Mark is not merely descriptive.
`
`Indeed, at least two of the articles relied upon by the Examining Attorney in the
`
`February 19, 2002 Office Action use “wearable electronics” in connection with
`
`Applicant’s E—WEAR Mark (see January 21, 2002 article from Twice, April 30, 2001 article
`
`from Electronic Media).
`
`4.
`
`The References To Applicant’s Literature Do
`Not Demonstrate That Applicant’s Mark Is Descriptive
`
`The Examining Attorney’s reference to Applicant’s literature does not support the
`
`premise that Applicant’s Mark is descriptive. The fact that Applicant advertises that its
`
`products “may be worn on clothing” further demonstrates the playful manner in which
`
`Applicant is using the term “wear.” Specifically, although clothing is worn on a user,
`
`3546ll.l
`
`

`
`items are not, in a conventional sense, worn on clothing. Once again, Applicant’s use of
`
`“wearable electronic gizmo’s” does not indicate that E—WEAR is descriptive.
`
`V.
`
`Any Doubts as to Proper Characterization of Applicant’s
`Mark Should Be Resolved in Favor of Applicant
`
`The Board has consistently held that any doubt as to whether a mark is suggestive
`
`or merely descriptive should be resolved in favor of Applicant.
`
`In re Stroh Brewery Co.,
`
`34 U.S.P.Q. 1796 (T.T.A.B. 1994)
`
`(“When doubts exist as to whether a term is
`
`descriptive as applied to the goods or services for which registration is sought, it is the
`
`practice of this Board to resolve doubts in favor of the applicant and pass the mark to
`
`publication with the knowledge that a competitor of applicant can come forth and
`
`initiate an opposition proceeding in which a more complete record can be established.”)
`
`(citations omitted); In re Pennwalt Corp., 173 U.S.P.Q. 317 (T.T.A.B. 1972) (while the
`
`Board’s conclusion that the mark was suggestive, rather than descriptive, “is not free
`
`from doubt, we believe in such questions as this that the doubt should be resolved in
`
`applicant’s behalf and the mark should be published. .
`
`. .”).
`
`Therefore, since Applicant’s Mark can easily be classified as suggestive, rather
`
`than descriptive, any doubts as to its appropriate characterization should be resolved in
`
`favor of Applicant.
`
`Hence,
`
`in accordance with established precedent, Applicant
`
`respectfully urges that
`
`the Board to resolve any doubt as to the mark’s proper
`
`classification in favor of Applicant and reverse the Examining Attorney’s refusal
`
`to
`
`register.
`
`3546ll.l
`
`-10-

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