Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA125173
`ESTTA Tracking number:
`02/15/2007
`
`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
`Reply Brief
`Reply Brief for Appellant - PNA - E-WEAR.pdf ( 8 pages )(481422 bytes )
`Holly Pekowsky
`ptodocket@arelaw.com
`/Holly Pekowsky/
`02/15/2007
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`————
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`-—-X
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`In Re Application of: Panasonic Corporation Of :
`North America
`'
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`Serial No.: 76/002,076
`Filed: March 16, 2000
`Trademark: E—WEAR
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`Law Office: 116
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`Attorney: Tamara G. Frazier
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`————
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`X
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`(FILED ELECTRONICALLY)
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`REPLY BRIEF FOR APPELLANT
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`Hon. Commissioner:
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`Panasonic Corporation Of North America (“Applicant”) submits this Reply Brief on
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`Appeal pursuant to 37 C.F.R. § 2.142, from the Final Office Action dated March 27, 2006
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`finally refusing registration of Applicant’s mark E—WEAR as applied to portable audio
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`products, namely, digital audio players that may be worn on various parts of the user’s
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`body, such as the head, wrist, arm, neck or hair (“Applicant’s Mark”) based upon mere
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`descriptiveness pursuant to Section 2(e) (1) of the Trademark Act.
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`Applicant maintains that its Mark is at most suggestive.
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`I.
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`Introduction
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`A mark is merely descriptive only if it immediately describes or conveys to one
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`who is unfamiliar with the product
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`its function or qualities.
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`In re: Hutchinson
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`Technology, Inc, 852 F.2d 552, 555 (Fed. Cir. 1988); In re: DC Comics, Inc., 215 U.S.P.Q.
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`394, 396 (C.C.P.A. 1982).
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`In contrast, “[a] term is suggestive if it requires imagination,
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`thought and perception to reach a conclusion as
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`to the nature of the services.”
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`Abercrombie & Fitch Co. 1/. Hunting World, Inc, 537 F.2d 4, 11 (2d Cir. 1976), (quoting
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`Stix Products,
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`Inc. v. United Merchants and Manufacturers, 295 F. Supp. 479, 488
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`(S.D.N.Y. 1968)).
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`As discussed more fully below, Applicant’s E—WEAR Mark does not “forthwith
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`convey an immediate idea” of Applicants portable audio products. Therefore, the Board
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`should reverse the Examining Attorney’s refusal
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`to register Applicant’s Mark on the
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`grounds of descriptiveness.
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`II.
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`Applicant’s Mark Is At Most Suggestive
`Of AQQlicant’s Audio Products
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`Contrary to the Examining Attorney’s contention,
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`the fact
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`that Applicants
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`identification of goods indicates that the goods may be Worn on various parts of the
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`user’s body does not mean that Applicant’s Mark is merely descriptive. Despite the fact
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`that the products may, from a literal perspective, be worn, this does not mean that the
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`average consumer thinks of electronics products as being worn, as opposed to being put
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`on, or carried on, the user’s body. See In re Shutts, 217 U.S.P.Q. 363 (T.T.A.B. 1983)
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`(SNO~RAKE not merely descriptive for snow removal
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`tool despite the fact that the
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`dictionary definition of “rake” includes “the act of removing or scraping materials” since
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`consumers would not think of it the word “rake” in that manner).
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`Moreover, even if consumers did think of consumer electronic products as being
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`worn, that does not mean that consumers would immediately identify the noun WEAR,
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`which is usually only associated with clothing (e.g., “evening wear,” casual wear”) with
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`consumer electronics products. As indicated in Applicant’s Appeal Brief,
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`there are
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`numerous third party registrations on the Principal Register for WEAR~formative marks
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`in connection with goods other than clothing,
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`in which the WEAR element
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`is not
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`disclaimed. See Institut Natl Des Appellations D’Origine v. Vinters Int’l C0,, 958 F.2d 1574
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`(Fed. Cir. 1992) (third party registrations in which term disclaimed is evidence that term
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`is descriptive).
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`Indeed, the fact that the now—canceled Registration No. 2,293,127 for
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`ELECTRONIC WEAR covering various consumer electronics products] which was
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`originally cited against Applicants Mark was registered on the Principal Register,
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`without disclaimer, is strong evidence that Applicant’s Mark is not merely descriptive.
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`A.
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`The “E” Element of Appficants Mark Is Not Merely Descriptive
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`The Examining Attorney has admitted that “E” is a recognized abbreviation for the
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`terms “enlightenment,” and “ecstasy.” These terms are playfully suggestive of the state
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`of a mind a user of Applicants audio products will achieve by using Applicant’s products.
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`Therefore, even if, as the Examining Attorney contends, “E” is a well recognized
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`abbreviation for “electronic,” “E” is not merely descriptive as applied to Applicants audio
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`products because “E”, as applied to Applicant’s products, also has two non-descriptive
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`meanings. See T.M.E.P. § 1213.05 (c) (a mark “will not be refused registration as merely
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`descriptive if one of its meanings is not merely descriptive in relation to the goods or
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`services”); Intitut Natl des Appellations D’Origine v. Vintners Int’Z C0,, Inc., 22 U.S.P.Q.2d
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`1190 (Fed. Cir. 1992), (CHABLIS WITH A TWIST not merely descriptive since the mark,
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`although descriptive of a type of wine (CHABLIS) with a citrus or fruit flavoring (WITH
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`1 This Registration covered electronic cordless telephone accessories, namely, antennas, backup batteries,
`phone batteries, battery eliminators, electrical cables, carrying cases and protectors, cellular phones,
`electrical cigarette lighter socket adapters, electrical cellular connectors, electrical coaxial connectors,
`digital display units, telephone headsets, telephone microphones, power supplies, voice storage circuits,
`electrical cellular wire connectors and telephone mounts.
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`A TWIST), also conveyed a second meaning, an “unusual approach to wine by adding a
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`citrus flavoring”); Henry Siegel Co. v. M & R Int’Z Mfg. Co., 4 U.S.P.Q.2d 1154, 1159
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`(T.T.A.B. 1987) (although “CHIC has a descriptive significance (i.e., stylish, elegant) as
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`applied to clothing .
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`.
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`.CHIC .
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`.
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`. can also be regarded as a misspelling, and a phonetic
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`equivalent of the word ‘chick’ which is defined .
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`.
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`. as .
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`. a young Woman”).
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`B.
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`The Third Party Articles Submitted By The Examining Attorney
`Do Not Evidence That App_licant’s E-WEAR Mark Is Descrip_tive.
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`Applicant maintains its position that even if “wearable electronics” is descriptive,
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`it is an unjustified leap of logic to presume that E—WEAR is descriptive. The fact that a
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`small number of articles refer to “wearable electronics” and “e-wear” does not mean that
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`these phrases are synonymous in the relevant public’s mind.
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`Indeed,
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`the statement
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`“wearable electronics, e—wear if you will,” in the December 10, 2001 article from Venutra
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`Country Star makes it clear that “e—wear” is NOT a recognized equivalent to “wearable
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`electronics.” This is underscored by the fact that most of the other articles cited by the
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`Examiner refer to “e-wear” in quotes, which indicates that the term is not in common
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`use. See June 11, 2001 article from St. Petersburg Times, November—December, 2002
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`article
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`from
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`Transport
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`Technology
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`Today,
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`and
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`wWw.forbes.com/2003/09/30/O930videopinacor.html.
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`In any event, as indicated in Applicant’s Appeal Brief, a number of these articles
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`should be disregarded since they refer to “e—wear” and/or “wearable electronics” in the
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`context of products which are clearly different from Applicants audio products, and
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`therefore do not establish that “wearable electronics” or “e—wear” is descriptive as
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`applied to Applicant’s products. See J. Wiss & Sons Co. v. W. E. Bassett Co., 462 F.2d 567
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`(C.C.P.A. 1972) (TRIM may be descriptive as to nail clippers, but not as to nail files).
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`For example, in virtually all of the articles referenced by the Examining Attorney’s
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`Appeal Brief, these terms are used to describe products other than Applicants products:
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`a
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`0
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`o
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`o
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`o
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`the December 10, 2001 article from Venutra Country Star refers to
`“wearable electronics, e-wear if you will” in connection with clothing and
`jewelry, which Applicant
`is not selling, and even the products to be
`featured in these items - miniature computers - are not covered by
`Applicant’s Application;
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`the June 11, 2001 article from St. Petersburg Times refers to “wearable
`electronic devices, or ‘e—wear”’ in connection with clothing and jewelry
`(“instead of T-shirts, gadget haute couture includes jackets with built—in
`MP3 players, cell phones and remote controls. And raincoats designed to
`handle Palm organizers”);
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`the November 22, 1996 article from USA Today refers to “e~wear” in
`connection with “voice-recognition hardware and four PC—card slots” - once
`again, these are not Applicant’s products; the products referenced in the
`article reside in a waistband — once again, Applicant is not selling clothing;
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`the November - December 13, 2002 article from Transport Technology
`Today refers to “wearable electronics or ‘e—wear”’
`in connection with
`clothing, jewelry and lapel pins; once again, there is no reference to the
`audio products covered by Applicant’s Application; and
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`the www.forbes.com/2003/O9/30/O930videopinaconhtml website refers
`to “‘e—wear’
`— wearable electronics and computers” in connection with a
`camera, not audio products.
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`Indeed, the January 21, 2002 article in Home Audio referenced by the Examiner is
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`clearly using E WEAR in a trademark sense to refer to products sold by Applicant (“It
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`ships under the E WEAR wearable~electronics series”). This, along with the numerous
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`other articles referenced in Applicants Appeal Brief which use E—WEAR to refer to
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`products sold by Applicant, support the conclusion that Applicants Mark is not merely
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`descriptive. See Ply boo America, Inc. v. Smith & Fang C0,, .31 U.A.P.Q.2d 1633 (T.T.A.B.
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`1999) (PLY BOO for bamboo laminate flooring and plywood made of bamboo not merely
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`descriptive where the majority of news articles utilized PLY B00 in connection with
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`applicants products).
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`The Examining Attorney’s reliance on the Board’s Decision in the Appeal for Serial
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`No. 76/349,852 for the mark E—WEAR covering a different range of goods than that
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`covered by the instant application2 for the proposition that “wearable electronics” is
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`equivalent to “e-wear” is misplaced for several reasons. As the Examining Attorney
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`concedes, the issue in that Appeal was the likelihood of confusion between Applicant’s
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`mark and the mark of a now canceled registration for ELECTRONIC WEAR.
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`Indeed, as
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`indicated in the Decision, although the Examining Attorney assigned to the ‘852
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`Application initially refused registration of the mark based on descriptiveness,
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`this
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`refusal was withdrawn.
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`If anything, this Decision supports Applicant’s conclusion that
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`its Mark is not merely descriptive.
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`The Board’s statement that “e—wear has been
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`recognized in a similar context - as the equivalent of wearable electronics” - does not
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`mean that it has been recognized as equivalent in the context of the goods covered by
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`the ‘852 Application,
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`let alone in the context of the goods covered by the instant
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`Application.3
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`2 This Application covered wearable portable audio/Video products, namely, digital camcorders, digital still
`cameras, digital audio players and digital voice recorder; liquid crystal display viewers for the viewing of
`videos, namely, video monitors and domnatrix sd—enabled printers for printing digitally recorded video
`images.
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`3 This distinction is underscored by the fact that the Board states, on page 10, that Applicant’s mark, as
`ap lied to the goods covered 1)
`the ‘8S2 A lication, has a “connotation” of wearable electronics, rather
`P
`3’
`PP
`than stating that it is commonly understood to be legally equivalent to wearable electronics.
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`C.
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`Applicant’s Specimen Does Not Demonstrate
`That Applicants Mark Is Descriptive
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`Contrary to the Examining Attorney’s contention, Applicant’s specimen of use does
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`not support the premise that Applicant’s Mark is descriptive. The fact that Applicant
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`advertises that its product “is extremely compact for wearability” further demonstrates
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`the playful - rather than literal ~ manner in which Applicant is using the term “wear,”
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`since the word “wearability” is defined as “the ability of a garment to withstand
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`prolonged wear” (see http://www.answers.com/topic/wearability) (emphasis added).
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`D.
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`Any Doubts as to Proper Characterization of Applicant’s
`Mark Should Be Resolved in Favor of Applicant
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`Since Applicant’s Mark can easily be classified as suggestive,
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`rather
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`than
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`descriptive, under established Board precedent, any doubts as to the appropriate
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`characterization of Applicant’s Mark should be resolved in favor of Applicant. In re Stroh
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`Brewery C0,, 34 U.S.P.Q. 1796 (T.T.A.B. 1994) (“When doubts exist as to whether a term
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`is descriptive as applied to the goods or services for which registration is sought, it is the
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`practice of this Board to resolve doubts in favor of the applicant and pass the mark to
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`publication with the knowledge that a competitor of applicant can come forth and
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`initiate an opposition proceeding in which a more complete record can be established”).
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`III. Conclusion
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`For the reasons stated above, as well as in Applicant’s Appeal Brief, Applicant
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`respectfully requests the Board to overrule the refusal to register Applicant’s Mark on the
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`grounds that the mark is merely descriptive.
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`Respectfully submitted,
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`AMSTER, ROTHSTEIN 8: EBENSTEIN LLP
`Attorneys for Applicant
`90 Park Avenue
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`New York, New York 10016
`(212) 336-8000
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`Dated: New York, New York
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`February
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`2007
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`By:
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`
`i‘
`«
`l
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`Morton A sfer
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`"
`
`Holly Pekowsky
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`354611.]
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`”8'