Advanced Lighting Tech-nologies, Inc.

Trademark Trial and Appeal Board

Nov 15, 2004

No. 76422584 (T.T.A.B. Nov. 15, 2004)

Mailed: November 15, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Advanced Lighting Technologies, Inc.
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Serial No. 76422584
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D. Joseph English of Duane Morris LLP for Advanced Lighting
Technologies, Inc.
Catherine Cain, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Advanced Lighting Technologies, Inc. has appealed from
the final refusal of the Trademark Examining Attorney to
register the mark E-LAMP for the following goods:
metal halide lighting system components, namely,
ballasts and electrical controls in class 9; and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76422584
2
metal halide lamps and metal halide lighting
systems consisting of lamps, ballasts, and
electrical controls, sold as a unit in
class 11.1
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark is merely descriptive of the
identified goods.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
The Examining Attorney maintains that the mark E-LAMP
merely describes the nature of the identified goods, namely
that they are lamps that contain electronic features or
components.
In support of the refusal to register, the Examining
Attorney submitted the following definitions:
e- adj. An abbreviation of “electronic” that
generally indicate information or functions
involving the Internet.2
E: E stands for electronic. But it’s become
the all-purpose Internet and Web prefix,
stuck on the front of any term you want, it
means to make things happen over the Internet/
Web, e.g., e-commerce, e-mail, e-check.3
E-E: Electronics to electronics. A function
of audio and especially video recording machines.4
1 Application Serial No. 76422584 filed June 18, 2002, on the
basis of applicant’s bona fide intention to use the mark in
commerce.
2 Official Internet Dictionary (1988).
3 Newton’s Telecom Dictionary (16th ed. 2000).
4 Dictionary of Television and Audiovisual Terminology (1988).
Ser No. 76422584
3
lamp: a device that generates light, heat, or
therapeutic radiation.5
In addition, the Examining Attorney submitted
printouts of the following web pages wherein the term “e-
lamp” is used.
After 1995, incandescent R-lamps will no longer
be manufactured. The Energy Policy Act of 1992
banned these along with many of the other least
energy efficient lamps. What will you put in
recessed down lights and track lights?
One option will be GE’s new Genura lamp. It’s
a product based on E-lamp technology that made a
big splash in the news a couple of years ago.
(http://www.oikos.com)
At last, the truly long-lived light bulb,
called the E-lamp (the E is short for electronic)
by developer Diablo Research and licensee
Intersource Technologies (both in Sunnyvale,
Calif.), the bulb survives some 20,000 hours—
20 times as long as today’s most durable
100-watt incandescent or fluorescent, an
E-lamp has nothing to burn out. An electronic
bulb doesn’t suddenly go black, it just fades
away.
(http://www.inc.com/magazine)
Also, the Examining Attorney submitted excerpts from
the NEXIS data base which refer to “E-lamp.” The following
are representative:
In June 1992, Pierre Villere was famous. His
company, Intersource Technologies had just
told the world about E-lamp, an electronic
5 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Ser No. 76422584
4
light bulb that would last 100 times longer
than a regular bulb and use one-fourth the
power.
(USA Today, January 19, 1995);
A long-life household light bulb designed
to last about seven years in normal use will
soon reach the market. The General Electric
bulb, known in the industry as an E-lamp
because it uses electronic controls, will go
on sale in Europe within weeks and in the
United States before the end of the year,
GE said.
(The Houston Chronicle, April 24, 1994); and
Two years ago, American Electric Power Co.,
the Columbus utility company, and two
Silicon Valley firms unveiled their version
of an E-lamp, but no bulbs were produced.
(Cleveland Plain Dealer, April 20, 1994).
Based on the above evidence, the Examining Attorney
argues that not only are the individual terms, namely “E”
and “LAMP” descriptive of the identified goods, but the
combination E-LAMP is equally descriptive. According to
the Examining Attorney, “[t]he combination of the two terms
E and LAMP in applicant’s mark merely describes to
consumers that applicant’s goods are lamps that contain an
electronic component.” (Final office action, p. 2).
Applicant, on the other hand, argues that the “E”
prefix is not descriptive of applicant’s identified goods
because the prefix means information or functions involving
computers. (Appeal brief, p. 3). Applicant maintains that
the definitions relied on by the Examining Attorney clearly
Ser No. 76422584
5
show that the “E” prefix would be understood by average
purchasers as relating to computers or the Internet.
Applicant has also submitted a definition of the prefix “e”
from the website http://www.techweb.com/encyclopedia:
(Electronic-) The “e” prefix, with or without
the hyphen, may be attached to anything that has
moved from the physical world to its electronic
alternative, such as, “e-mail” and “e-commerce.”
“E” words have become synonymous with the
Internet.
Further, applicant argues that the Board has
recognized that the primary meaning of the “E” prefix
relates to computers and the Internet, citing In re SPX
Corporation, 63 USPQ2d 1592 (TTAB 2002). In addition,
applicant argues that the Office’s practice “is to accept
‘E’ prefix marks for registration for goods having
electrical or electronic aspects so long as the goods do
not involve computers or the Internet.” (Brief, p. 6).
Attached to applicant’s brief are four applications and two
registrations for marks with the “E” prefix.
A term is considered to be merely descriptive of
goods, within the meaning of Section 2(e)(1) of the Act, if
it immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
Ser No. 76422584
6
of the goods. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that
a term describe all of the properties or functions of the
goods in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a single significant attribute or idea about
them. In re Venture Associates, 226 USPQ 285 (TTAB 1985).
Moreover, the question of whether a mark is merely
descriptive must be determined not in the abstract, that
is, by asking whether one who sees the mark alone can guess
what the applicant’s goods are, but in relation to the
goods for which registration is sought, that is, by asking
whether, when the mark is applied to the goods, it
immediately conveys information about their nature. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
We recognize that the letter “e” has a specific
meaning in relation to computers and the Internet.
However, the letter “e” is not limited to this specific
meaning and the dictionary evidence of record establishes
that one of the meanings of “e” is “electronic.” Further,
the web page printouts and the excerpts retrieved from the
NEXIS database show that an “E-lamp” is a light bulb with
electronic controls.
Ser No. 76422584
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Also, we note that in the web page printouts of
Venture Lighting, applicant’s E-LAMP lighting system is
described as “A Revolutionary Electronic System From the
Leaders of Lighting Innovations.”
In view of the foregoing, we find that the term E-LAMP
immediately conveys to prospective purchasers that the
identified goods are in the nature of and are components of
electronic lamps or “e-lamps.”
Contrary to applicant’s contention, the Board did not
hold in the case of In re SPX Corporation that the prefix
“E” related only to computers and the Internet. Rather,
the Board stated at 63 USPQ2d 1596 that the specific
dictionary definitions submitted by the Examining Attorney
therein showed that the prefix indicated the “electronic or
Internet nature of an item or service….” (emphasis added).
With respect to the third-party applications and
registrations submitted by applicant with its brief, as
noted by the Examining Attorney, evidence submitted for the
first time with a brief on appeal is normally considered by
the Board to be untimely and therefore is generally given
no consideration. In view thereof, we have not considered
this evidence. However, even if we had considered the
applications and registrations, this would not change the
result herein. Third-party applications are not evidence
Ser No. 76422584
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that the PTO has “accepted” the marks therein for
registration and we note that each of these applications
has been held abandoned. With respect to the two
registrations, as often noted by the Board, each case must
be decided on its own merits. We are not privy to the
records in the files of the cited registrations and,
moreover, the determination of registrability of particular
marks by the Trademark Examining Groups cannot control the
result in another case involving a different mark for
different goods. See: In re Nett Designs, Inc., 57 USPQ2d
1564 (Fed. Cir. 2001).
Decision: The refusal to register is affirmed.