From: Frazier, Tamara
`
`Sent: 1/26/2007 4:51:14 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 76002076 - E-WEAR - 55210/373
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 76002076.doc
`
`
`
`Sent: 1/26/2007 4:51:14 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 76002076 - E-WEAR - 55210/373
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 76002076.doc
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
` SERIAL NO:
`
`76/002076
`
`
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
`
`Applicant, Panasonic Corporation of America, has appealed the Trademark Examining
`
`Attorney’s final refusal to register the trademark E-WEAR for “portable audio products,
`
`namely, digital audio players that may be worn on various parts of the user's body, such
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`as the head, wrist, arm, neck or hair,”1 in Class 9 on the ground that the mark is merely
`
`descriptive of applicant’s goods under Trademark Act Section 2(e)(1), 15 U.S.C.
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`§1052(e)(1).
`
`
`
`
`
`STATEMENT OF THE FACTS:
`
`On March 16, 2000, applicant filed its application on the Principal Register for the mark
`
`
`
`
`1 The identification reflects changes made by the applicant in its Response dated November 14, 2001.
`
`
`
`
`
`
`
`
`
`
`*76002076*
`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
`
`
`
`Please provide in all correspondence:
`
`1. Filing date, serial number, mark and
` applicant's name.
`2. Date of this Office Action.
`3. Examining Attorney's name and
` Law Office number.
`4. Your telephone number and e-mail
`address.
`
`
`
`
` APPLICANT:
`
`PANASONIC CORPORATION OF NORTH AMERICA
`
`
` CORRESPONDENT ADDRESS:
` MORTON AMSTER
` AMSTER, ROTHSTEIN & EBENSTEIN
` 90 PARK AVENUE
` NEW YORK, NEW YORK 10016
`
`
`E-WEAR
`
` MARK:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO: 55210/373
`
` CORRESPONDENT EMAIL ADDRESS:
`
`
`
`
`
`
`E-WEAR for “wearable portable audio products, such as pendants, wrist straps.”
`Applicant based
`
`the application on a bona fide intent to use the mark in commerce under Trademark Act
`Section
`
`1(b), 15 U.S.C. §1051(b). In the First Office Action dated September 13, 2000,
`
`registration was refused by the previous examining attorney (1) under Section 2(e)(1) on
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`the ground that the mark merely describes the goods identified in the application, (2) in
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`the alternative, under Section 2(e)(1) on the ground that the mark deceptively
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`misdescribes the goods identified in the application, and (3) under Section 2(d) on the
`
`ground that the mark, when used in connection with the identified goods, so resembles
`
`the mark in Reg. No. 1845160 as to be likely to cause confusion, to cause mistake, or to
`
`deceive. The applicant was required to clarify the identification of goods and to submit
`
`information concerning the goods. The applicant was also advised of the potential refusal
`
`under Section 2(d) with regard to prior-filed Application Serial Nos. 75885905,
`
`75755972, 75743884, 75615245, 75720646, 75772783 and 75742114.
`
`
`
`On March 12, 2001, applicant (1) proposed an amended identification of goods, (2)
`
`submitted information concerning the goods, (3) argued against the refusal to register the
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`mark under Section 2(e)(1) as being merely descriptive, (4) argued against the refusal to
`
`register the mark under Section 2(e)(1) as being deceptively misdescriptive of the goods,
`
`and (5) argued against the refusal to register the mark under Section 2(d) likelihood of
`
`confusion with regard to Reg. No. 1845160.
`
`
`
`
`
`On May 31, 2001, (1) further action on the application was suspended pending the
`
`disposition of prior-filed Application Serial Nos. 75885905, 75755972, 75720646,
`
`75772783 and 75742114, (2) prior-filed Application Serial Nos. 75743884, 75615245
`
`were withdrawn due to abandonment, (3) the refusals to register the mark under Section
`
`2(e)(1) as merely descriptive and alternatively as deceptively misdescriptive were
`
`maintained and continued, (4) the refusal to register under Section 2(d) with regard to
`
`Reg. No. 1845160 was maintained and continued, and (5) the requirement for
`
`clarification of the identification of goods and additional information was maintained and
`
`continued.
`
`
`
`On November 14, 2001, the applicant (1) amended the identification of goods, (2)
`
`submitted additional information describing the goods, (3) argued against the refusal to
`
`register the mark under Section 2(e)(1) as merely descriptive of the goods, (4) argued
`
`against the refusal under Section 2(e)(1) as deceptively misdescriptive of the goods, (5)
`
`argued against the refusal to register the mark under Section 2(d) likelihood of confusion
`
`with regard to Reg. No. 1845160, (6) argued against the potential refusal to register the
`
`mark under Section 2(d) with regard to prior-filed Application Serial Nos. 75885905,
`
`75755972, 75720646, 75772783 and 75742114 .
`
`
`
`On February 19, 2002, (1) the amended identification and additional information
`
`describing the goods were accepted, (2) the requirement for additional information was
`
`withdrawn, (3) prior-filed Application Serial No. 75885905 was withdrawn due to
`
`abandonment, (4) further action on the application was suspended pending the disposition
`
`
`
`of prior-filed Application Serial Nos. 75755972, 75720646, 75772783 and 75742114, (5)
`
`the refusals to register the mark under Section 2(e)(1) as merely descriptive and
`
`alternatively as deceptively misdescriptive were maintained and continued, and (6) the
`
`refusal to register under Section 2(d) with regard to Reg. No. 1845160 was maintained
`
`and continued.
`
`
`
`On June 18, 2004, applicant filed an Amendment to Allege Use with one specimen
`
`showing the mark as used in commerce. On July 6, 2004, the Amendment to Allege Use
`
`was accepted by the previous examining attorney and a Notice of Acceptance of
`
`Amendment to Use was issued.
`
`
`
`On August 16, 2005, an Office Action was sent advising the applicant that (1) the refusal
`
`to register under Section 2(d) with regard to Reg. No. 1845160 was withdrawn due to the
`
`cancellation of the registered mark under Section 8, (2) prior-filed Application Serial
`
`Nos. 75755972, 75772783 and 75742114 were withdrawn due to abandonment, (3) prior-
`
`filed Application Serial No. 75720646 was withdrawn, (4) the refusals to register the
`
`mark under Section 2(e)(1) as merely descriptive and alternatively as deceptively
`
`misdescriptive were maintained and continued, and (5) a new refusal to register under
`
`Section 2(d) with regard to Reg. No. 2293127 was issued.
`
`
`
`On February 10, 2006, applicant (1) argued against the refusal to register the mark under
`
`Section 2(e)(1) as merely descriptive, (2) argued against the refusal to register the mark
`
`
`
`under Section 2(e)(1) as deceptively misdescriptive, and (3) argued against the refusal to
`
`register the mark under Section 2(d) with regard to Reg. No. 2293127.
`
`
`
`On March 27, 2006, the previous examining attorney withdrew the Section 2(e)(1)
`
`deceptively misdescriptive refusal. However, he issued a FINAL refusal under Section
`
`2(e)(1) since the proposed mark was descriptive and under Section 2(d) with regard to
`
`Reg. No. 2293127.
`
`
`
`On September 6, 2006, applicant filed a Notice of Appeal and a request for
`
`reconsideration of previously raised arguments in the Final Office Action dated March
`
`27, 2006, with the Trademark Trial and Appeal Board.
`
`
`
`On September 28, 2006, the previous examining attorney withdrew the final refusal to
`
`register the mark under Section 2(d) with regard to Reg. No. 2293127 since that
`
`registration was cancelled. However, he denied the request for reconsideration of the
`
`refusal to register the mark under Section 2(e)(1). Accordingly, on October 2, 2006, the
`
`Trademark Trial and Appeal Board resumed the appeal proceedings. On November 27,
`
`2006, applicant filed its appeal brief. Thereafter, the application was re-assigned to the
`
`under-signed examining attorney.
`
`
`
`
`
`ISSUE
`
`
`
`The only issue on appeal is whether the mark, when used in connection with the
`
`identified audio products, is merely descriptive of applicant’s goods under Trademark
`
`Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
`
`
`
`
`
`ARGUMENT
`
`REGISTRATION SHOULD BE REFUSED UNDER TRADEMARK
`ACT SECTION 2(E)(1) BECAUSE THE PROPOSED MARK, “E-
`WEAR,” IS MERELY DESCRIPTIVE OF THE APPLICANT’S
`AUDIO PRODUCTS
`
`
`
`Generally, a mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C.
`
`§1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature,
`purpose or use
`
`of the relevant goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
`Cir. 1987);
`
`In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re
`MetPath Inc.,
`
`223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979);
`TMEP
`
`§1209.01(b).
`
`
`
`The determination of whether or not a mark is merely descriptive must be made in
`
`relation to the goods or services for which registration is sought, not in the abstract. This
`
`requires consideration of the context in which the mark is used or intended to be used in
`
`connection with those goods or services, and the possible significance that the mark
`
`
`
`would have to the average purchaser of the goods or services in the marketplace. See In
`
`re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor
`
`Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture
`
`Lending Associates, 226 USPQ 285 (TTAB 1985).
`
`
`
`It is generally not necessary that a term describe all of the purposes, functions,
`
`characteristics or features of a product to be considered merely descriptive; it is enough if
`
`the term describes one significant function, attribute or property. In re Oppedahl &
`
`Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d1370, 1371 (Fed. Cir. 2004) ("A mark
`
`may be merely descriptive even if it does not describe the 'full scope and extent' of the
`
`applicant's goods or services," citing In re Dial-A-Mattress Operating Corp., 240 F.3d
`
`1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Gyulay, 820 F.2d at 1218, 3
`
`USPQ2d at 1010.
`
`
`
`In the instant case, applicant applied to register the mark “E-WEAR” for “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” in International Class 9. (emphasis
`
`supplied). As set forth below, the mark is merely descriptive of a feature of applicant’s
`
`goods and should therefore be refused under Trademark Section 2(e)(1).
`
`
`
`
`
`(I)
`
`THE TERM “WEAR” IS DESCRIPTIVE OF APPLICANT’S
`GOODS, NAMELY DIGITAL AUDIO PLAYERS THAT MAY BE
`WORN ON VARIOUS PARTS OF THE USER’S BODY
`
`
`
`The word WEAR is defined as, “to have on your body…”2 or “[t]o carry or have
`
`habitually on the person… .”3 Applicant’s argument on page four of its Brief states that
`
`“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,” is not persuasive. Applicant’s
`
`other argument, also on page four, states that “while a person habitually carries items
`
`which serve as 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,” is misplaced.
`
`
`
`Applicant’s mark is “E-WEAR” for use on “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.” (emphasis supplied). It is clear from this description that
`
`applicant intends for it’s portable audio products to be worn, and that WEAR, as it
`
`pertains to applicant’s goods, can be defined as “to have on your body…” or “[t]o carry
`
`or have habitually on the person.” However, regardless of whether applicant intends to
`
`use the word WEAR as a verb, it is enough if the term describes one significant function,
`
`
`2 Cambridge English Dictionary. Copyright 2000 by Cambridge University Press. Attached as evidence to
`the Office Action dated September 13, 2000.
`
` The American Heritage Dictionary of the English Language, Fourth Edition. Copyright 2000 by
`Houghton Mifflin Company. Attached as evidence to the Office Actions dated August 16, 2005 and March
`27, 2006.
`
`
` 3
`
`
`
`attribute or property of the goods to be considered merely descriptive. See In re
`
`Oppedahl, supra. The word, WEAR, in applicant’s mark clearly describes the feature of
`
`applicant’s goods that allows it “to be worn on various parts of the user's body, such
`
`as the head, wrist, arm, neck or hair.” (emphasis supplied).
`
`
`
`
`
`(II) THE PREFIX “E” IS A WELL-KNOWN ABBREVIATION FOR
`ELECTRONIC
`
`The prefix “E” is a well-known abbreviation for “electronic,” and is commonly used as a
`
`prefix to indicate “electronic.”4 Moreover, numerous cases have recognized the “E”
`
`prefix as a descriptive designation for electronic when the mark is used for electronic
`
`goods and/or services. See generally, In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)
`
`(E-AUTODIAGNOSTICS merely descriptive of an “electronic engine analysis system
`
`comprised of a hand-held computer and related computer software”); In re Styleclick.com
`
`Inc., 57 USPQ2d 1445 (TTAB 2000) (E FASHION held merely descriptive of software
`
`for use in shopping via global computer network and electronic retailing services);
`
`Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) (E-
`
`TICKET held generic for computerized reservation and ticketing of transportation
`
`
`4 Cambridge English Dictionary. Copyright 2006 by Cambridge University Press. Attached as evidence to
`the Office Action dated March 27, 2006; Encarta World English Dictionary [North American Edition].
`Copyright 2005 by Microsoft Corporation. Attached as evidence to the Office Action dated August 16,
`2005.
`
`
`
`
`services). In this case, where the applicant’s goods are electronic, the prefix “E” would
`
`be understood by potential purchasers as meaning “electronic.” 5
`
`
`
`Applicant argues on page five of its Brief that the examining attorney’s reliance on
`
`acronym finder is misplaced because there are other words, such as “enlightenment,”
`
`“ecstasy,” “entertainment television” and “element,” to which acronym finder relates the
`
`letter “E.” However, descriptiveness is considered in relation to the relevant goods. The
`
`fact that a term may have different meanings in other contexts is not controlling on the
`
`question of descriptiveness. In re Chopper Industries, 222 USPQ 258 (TTAB 1984); In
`
`re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Champion International Corp.,
`
`183 USPQ 318 (TTAB 1974); TMEP §1209.03(e). In this case, it is clear that when the
`
`letter “E” is viewed in relationship to the applicant’s portable audio product, it refers to
`
`the term “electronic.”
`
`
`
`Applicant’s further argument on page five of its Brief, “that 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,” is also not persuasive. A mark that
`
`combines descriptive terms is generally not registrable unless the composite creates a
`
`unitary mark with a unique, non-descriptive meaning or commercial impression. In re
`
`
`5 The term ELECTRONIC means “of, relating to, produced by means of electronics.” The American
`Heritage Dictionary of the English Language, Fourth Edition. Copyright 2000 by Houghton Mifflin
`Company. Attached as evidence to the Office Action dated August 16, 2005.
`
`
`
`
`Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive
`
`of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In
`
`re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS held merely
`
`descriptive of “computer software for use in the development and deployment of
`
`application programs on a global computer network”). The applicant’s proposed mark
`
`“E-WEAR” does not create a unitary mark with a unique, non-descriptive meaning or
`
`commercial impression. Instead, the term “E-WEAR” immediately conveys a descriptive
`
`meaning and commercial impression. The term “E-WEAR” conjures the image that
`
`applicant’s electronic audio products may be worn on the user’s body.
`
`
`
`
`
`(III)
`
`THE TERM “E-WEAR” REFERS TO “WEARABLE
`ELECTRONICS” AND IS USED INTERCHANGEABLY WITHIN
`THE ELECTRONICS INDUSTRY
`
`The word WEAR is defined as, “to have on your body…” or “[t]o carry or have
`
`habitually on the person…” When the acronym for electronic, “E,” is used with “Wear,”
`
`the term most likely means “electronic wear”6 and refers to “wearable electronics.”
`
`Applicant’s argument that the articles submitted by the examining attorney refer to
`
`“wearable electronics” and “wearable digital audio players” not applicant’s mark (E-
`
`WEAR) and that “even if “wearable electronics” were descriptive, it is an unjustified leap
`
`of logic to presume that E-WEAR is descriptive” is not persuasive. To the contrary, the
`
`articles submitted by the examining attorney illustrate that the terms “wearable
`
`
`6 USA Today, July 8, 1998. “When you see a technological term that starts with the letter ‘e’ and a hyphen,
`it most likely is an e-commerce-driven term. And nine times out of 10, the ‘e’ means electronic.”
`
`
`
`electronics” and “wearable digital audio players” are used to describe various electronic
`
`products from a variety of sources. Further, the term “E-WEAR” is used in the same
`
`descriptive manner. Thus, the articles submitted show that these terms are descriptive.
`
`
`
`
`
`The Trademark Trial and Appeal Board has held that materials obtained through
`computerized
`
`text searching is competent evidence to show the descriptive use of terms under
`Trademark Act
`
`Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517
`n.3
`
`(TTAB 1984); TMEP §710.01(a). Accordingly, the examining attorney makes reference
`
`to and incorporates herein a sample of excerpted articles from the LEXIS/NEXIS®
`
`computerized database included with the February 19, 2002 and the March 27, 2006
`
`Office Actions. The excerpts demonstrate that the letter “E” in the applicant’s mark
`
`would be understood as meaning “electronic,” and that “E-Wear” commonly refers to
`
`wearable electronics.
`
`December 10, 2001 article from Ventura County Star refers to “wearable
`
`electronics, e-wear if you will, digital jewelry … At its Consumer Electronics
`
`Show – the annual coming-out party for the latest in these types of products – it
`
`plans an e-wear fashion session complete with runway modes … [Bill] Gates is a
`
`keynote speaker.” (emphasis supplied).
`
` •
`
`
`
`
`
`
`
`June 11, 2001 article from St. Petersburg Times refers to how “some of these
`
`products are available now, and more are on the way. It’s being called wearable
`
`electronics, or “e-wear.” (emphasis supplied).
`
`November 22, 1996 article from USA Today refers to “[m]ore fashionable and
`
`less expensive is the e-wear from VIA of Northfield, Minn. A Pentium PC,
`
`voice-recognition hardware and four PC-card slots reside in a waistband that
`
`looks like Bruce Wayne’s bat-belt…” (emphasis supplied).
`
`November-December, 2002 article from Transport Technology Today refers to “a
`
`new trend emerging called wearable electronics or “e-wear,” and it’s not longer
`
`some futuristic notion – it’s fashion meets technology.” (emphasis supplied).
`
`January 21, 2002 article from Home Audio refers to electronic devices such as
`
`digital still cameras, “It ships under the E Wear wearable-electronics series in
`
`March with 64MB of removable SD memory.” (emphasis supplied).
`
`•
`
` •
`
`
`
` •
`
`
`
` •
`
`
`
`
`
`Moreover, the examining attorney makes reference to and incorporates herein an excerpt
`
`of a sample representative articles obtained from a search of the Internet using the
`
`Google® computerized database and included with the March 27, 2006 Office Action.
`
`The excerpts further demonstrate that the term “e-wear” refers to “wearable electronics.”
`
`The relevant parts of the articles read as follows:
`
`
`
`
`
`http://www.ringsurf.com/netring?ring=Wearables;action;=list
`
`“we are developing a range of e-wear … devices have spawned a new and
`
`exciting technology are – wearable electronics…” (emphasis supplied).
`
`
`
`www.findarticles.com/p/articles/
`
`“The ultimate in wearable electronics, The palm-sized SV-AV30 e-wear
`
`recorder snaps digital images, shoots MPEG 4 video, plays MPR music files…”
`
`(emphasis supplied).
`
`
`
`www.forbes.com/2003/09/30/0930videopinnacor.html
`
`“At the Massachusetts Institute of Technology, they’ve been researching ‘e-wear’
`
`– wearable electronics and computers – for years…” (emphasis supplied).
`
`
`
`Most notably, the examining attorney makes reference to and incorporates herein an
`
`excerpt from a Trademark Trial and Appeal Board decision for co-pending Application
`
`Serial No. 76349852, for the identical mark “E-WEAR.”7 Although the issue on appeal
`
`was with respect to a Section 2(d) refusal, the TTAB found on page 10 of the opinion
`
`that:
`
`
`
`“Applicant has provided no evidentiary support for its contention that the letter
`“E” in this context will be seen as suggesting the word “Entertainment.” On the
`other hand, the Trademark Examining Attorney has shown that in a similar
`context, “E-wear” has been recognized as the equivalent of “wearable electronics”
`… Accordingly, despite the obvious differences in the appearance and sound of
`
`7 www.uspto.gov/web/offices/com/sol/foia/ttab/2dissues/2005/76349852.pdf.
`
`
`
`E-WEAR and ELECTRONIC WEAR, these designations have virtually
`identical connotations of “wearable electronics” as applied to wearable,
`portable, electronic products, and are similar enough in appearance to create the
`same overall commercial impressions.” (emphasis supplied).
`
`
`
`This language further demonstrates that the term “e-wear” refers to “wearable
`
`electronics,” as held by the United States Patent and Trademark Office, Trial and Appeal
`
`Board.8
`
`
`
`Based on the above submitted articles, when the acronym for electronic, “E,” is used with
`
`“Wear,” the term clearly refers to wearable electronics. Additionally, the specimen of
`
`record submitted by applicant on October 15, 2003, shows use of the mark on the “e-wear
`
`SD Audio Player.” This clearly illustrates that the term E-WEAR is descriptive of
`
`applicant’s goods. Specifically, the specimen describes the product as “extremely
`
`compact for wearability.” (emphasis supplied).
`
`
`
`(IV) CONCLUSION
`
`
`
`The applicant’s mark, E-WEAR, merely combines descriptive terms without creating a
`
`new non-descriptive meaning. The mark would be immediately understood as describing
`
`a feature of the goods, namely, that the applicant’s digital audio players are wearable
`
`electronics. For the foregoing reasons, it is respectfully submitted that the refusal of
`
`registration under Trademark Act Section 2(e)(1) as merely descriptive, 15 U.S.C.
`
`§1052(e)(1), be affirmed.
`
`
`8 The Board is hereby requested to take this language into consideration based on The Citation of Opinions
`to the Trademark Trial and Appeal Board dated December 27, 2006.
`
`
`
`Respectfully submitted,
`
`/tfrazier/
`Tamara G. Frazier
`Trademark Examining Attorney
`Law Office 116
`Phone: (571) 272-8256
`Fax: (571) 273-8256
`
`
`
`Michael W. Baird
`Managing Attorney
`Law Office - 116
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