eCopy, Inc.

Trademark Trial and Appeal Board

Apr 15, 2011

No. 76682275 (T.T.A.B. Apr. 15, 2011)

Mailed:
April 15, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re eCopy, Inc.
________

Serial No. 76682275
_______

Douglas R. Wolf of Wolf Greenfield & Sacks P.C., for eCopy,
Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Taylor, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Applicant eCopy, Inc. seeks registration on the
Principal Register of the mark “eCopy,” in standard
character format, for “software discs and associated
apparatus for enabling the scanning and electronic
distribution of documents over computer networks and touch
screen control panels for interfacing with such software,”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76682275
2
in International Class 9.1 The trademark examining attorney
refused registration on the ground that applicant’s mark is
merely descriptive of the identified goods under Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1) and has not
acquired distinctiveness under Section 2(f).2 Applicant
appealed the final refusal. Both applicant and the
examining attorney filed briefs. After careful
consideration of all of the arguments and evidence of
record, we affirm the refusal to register.
By applying for a registration under the provision of
Section 2(f), applicant admits that the term “eCopy” is
descriptive of the goods for which it seeks registration.3
See The Cold War Museum, Inc. v. Cold War Air Museum, Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (“where an applicant
seeks registration on the basis of Section 2(f), the mark’s

1 Serial No. 76682275, filed on September 24, 2007, under
Trademark Act Section 1(a), 15 U.S.C. §1051(a), and claiming
acquired distinctiveness under Section 2(f).
2 We agree with applicant that the wording used by the examining
attorney could have been more artful. In particular, the
examining attorney referred during prosecution to the
needlessness of submitting evidence of acquired distinctiveness
for a “generic term” although there was no genericness refusal.
3 On brief, applicant argued that “[t]he record establishes that
eCopy is not merely descriptive.” (appl’s brief at 2.) However,
the brief also acknowledged that “[t]he original Application
included the recitation that the Applicant’s eCopy mark had
become distinctive and has acquired secondary meaning as a result
of more than five (5) years of continuous exclusive use
throughout the United States.” Id. Applicant did not argue its
claim of Section 2(f) acquired distinctiveness in the alternative
during prosecution of its application.
Ser. No. 76682275
3
descriptiveness is a nonissue; an applicant’s reliance on
Section 2(f) during prosecution presumes that the mark is
descriptive.”). We focus our analysis, then, on the amount
of evidence applicant would need to show that its use of
the mark has acquired distinctiveness, and the sufficiency
with which applicant has done so.
First, we must determine the degree of descriptiveness
of the mark that applicant seeks to register in relation to
its goods. In this regard, we note that a term is deemed
to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. That a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
Ser. No. 76682275
4
USPQ 591, 593 (TTAB 1979). Moreover, it is settled that
“[t]he question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002).
The examining attorney submitted evidence of numerous
Internet articles and advertisements showing that the term
“ecopy” is used by multiple third parties as a shortened
term for the words “electronic copy.”4 A sampling of this
evidence includes the following web excerpts (with the term
“eCopy” indicated in bold):

Public Utility Commission: eDockets: Docket
Summary: Second Amendment to Interconnection
Agreement, Submitted for Commission Approval
Pursuant to Section 252(e) of the
Telecommunications Act of 1996. Filed by [–] for
[—](cover letter dated 4/24/02); Electronic copy
provided on disk (bad disk), replacement ecopy
received on 4/26/02.
http://apps.puc.state.or.us/edockets

IRS: Information Technology: How to Request a
Flexi Place Pager: The local ITS POC will
resubmit approved requests via electronic copy

4 As stated above, by asserting a claim of Section 2(f) acquired
distinctiveness, applicant has admitted that the mark “eCopy” is
merely descriptive of the goods for which it seeks registration.
We are assessing this evidence, rather, to determine the degree
of descriptiveness of the term with regard to those goods.
Ser. No. 76682275
5
(e-copy)5 to the information Technology Service
Voice Services support staff. www.irs.gov

Get Women Who Love Psychopaths, Just Like His
Father, and The Child Well-Being Workbook,
(ecopy), for only $34.95.
www.justlikehisfather.com

The Write Way: finding the right words The Write
Way Fees: Copy edit (eCopy only): $4.50/page.
www.thewriteway.us

XGS Products: While supplies last, we’re
including a FREE eCopy of “programming the SX
Microcontroller – 1st Ed.” and a FREE vintage
Atari-compatible joystick with every XGS
microEdition. www.xgamestation.com

Method and system for creating a document having
metadata” U.S. Patent No. 7397468; The invention
claimed is: (4) The method of claim 1 further
comprising storing an e-copy of the document
strokes to the metadata storage device.

U.S. and International Markets for
Phytoremediation, 1999-2000” by David J. Glass,
Ph.D. July 1999 New Reduced Prices and Discounts
for eCopies. www.dglassassociates.com

SciDAC: Conference Schedule: Abstracts of papers
and ecopies of posters will be linked as they
become available, slides will be linked AFTER
they have been presented. www.csm.oml.gov

The overwhelming evidence of record convinces us that
the term “eCopy” is, at the very least, highly descriptive
of the goods for which applicant seeks registration,
“software discs and associated apparatus for enabling the

5 Although some of the uses include hyphens or plurals, we find
those differences to have no legal significance. See Winn’s
Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 144 (TTAB 1979)
(difference of apostrophe did not create significantly distinct
commercial impression); Goodyear Tire & Rubber Co. v. Dayco.
Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (difference of hyphen
was insignificant).

Ser. No. 76682275
6
scanning and electronic distribution of documents over
computer networks and touch screen control panels for
interfacing with such software.” This conclusion is
consistent with Board precedent, in which we have
recognized the prefix “e” as a shorthand for “electronic.”
See In re International Business Machines Corp., 81 USPQ2d
1677, 1679 (TTAB 2006) (for proposed mark “eserver” Board
took judicial notice that “e“ stands for “electronic”); and
In re Styleclick, 57 USPQ2d 1445, 1447-8 (TTAB 2000) (for
proposed mark “E FASHION” Board accepted that “e” is
recognized as denoting “electronic”). Accordingly, with a
highly descriptive mark, applicant would need a
commensurate high degree of evidence to show that its mark
has acquired distinctiveness for its goods. See Yamaha
Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1008 (Fed. Cir. 1988) (quoting case law and
treatise authorities “in general, the greater the degree of
descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning.”)
The Section 2(f) evidence offered by applicant
includes press and trade articles discussing eCopy and
other products offered by applicant, promotional materials
from applicant and its partners also discussing the
applicant’s various products, and a declaration from
Ser. No. 76682275
7
applicant’s president attesting to sales and revenue. We
address the latter first.
In support of its claim of acquired distinctiveness,
applicant submitted a declaration from its president, Eric
Schmid. The declaration, dated June 16, 2008, attests to
an “estimated” “more than 350 active dealer partners” who
have advertised the “eCopy mark in the period 2001 to
date.” It further makes an “estimate” of “almost
$10,000,000 in promotion/advertising of the eCopy mark
since 2002.” Finally, the declaration includes a “partial
tabulation of sales” over a five and a half year period
“which shows almost $300,000,000 worth of sales just of
these eCopy products alone.” However, it appears from the
attached summary that it refers to a “Consolidated
Statement of Operations: Summary View” of all products sold
by eCopy the applicant, not just products sold under eCopy
the mark. In other words, it is difficult for us to know
how much of that amount can be attributed to the actual
eCopy mark and the specific goods listed in the present
application. Furthermore, even if we were to attribute the
full amount to the eCopy mark, there is no context at all
given for the industry. Therefore, we can only accord this
Ser. No. 76682275
8
evidence limited probative value. It simply does not tell
us very much.6
We turn then to an examination of the articles and
press submitted by applicant in support of its claim of
acquired distinctiveness. Applicant included a voluminous
amount of evidence. Specifically, applicant submitted over
two thousand pages in support of its claim. Of these,
applicant highlighted about one hundred with its appeal
brief. We note of course that it is specifically not the
amount, but rather the sufficiency, of the evidence, that
is at issue in our analysis. For example, a number of the
press reports refer to an award granted to applicant.
However, these refer to a product that is not sold under
the eCopy mark (ScanStation OP) see Buyer’s Laboratory
Inc., Press Release November 9, 2005, submitted by
applicant (“Buyer’s Laboratory Inc. (BLI) kicked off its
Fall 2005 “Pick” awards with today’s announcement citing
eCopy’s ScanStation OP as BLI’s Inaugural choice for
‘Outstanding Scan Routing Solution’ in the company’s new
Solutions category.” Accordingly, we do not find this or
other articles on the subject to refer to any acquired

6 The same is true for press reports regarding investments in the
company. They simply do not give us context in the industry, nor
tell us whether the particular mark as used on or in connection
with the goods at issue in this application has acquired
distictiveness.
Ser. No. 76682275
9
distinctiveness of the “eCopy” mark vis-à-vis the goods for
which applicant seeks registration.
Likewise, the press and “customer snapshots” submitted
by applicant are largely repetitive. Although they do show
use of the term “eCopy,” they do not clearly use the term
as a source-identifier. Indeed, applicant itself uses the
term descriptively, including as a plural. Examples
include the following:
Making eCopies: Sending an eCopy instead of an
unreadable fax or tardy overnight package helps
accelerate business transactions by letting
workgroups instantly share and view original-
quality paperwork – while saving time and money
and eliminating the frustration often associated
with overnight and fax distribution. The eCopy
product suite includes these components:
• eCopier™7 - a small formatted touchscreen-
based control panel easily attached to a
networked digital copier or MFP;
• eCopy ShareScan™ - document Distribution
software installed on a server connected to
the digital copier;
• eCopy Desktop™ - PC-based client software
for document editing, annotation and
management and,
• eCopy Viewer™ – a free, small-footprint
viewing and printing application easily
downloadable from www.ecopy.com.
(Corporate Background: eCopy, Inc., submitted
with response to office action and as Exhibit A
to applicant’s brief)

Making an eCopy is such an obvious thing to do,
we want to obliterate the question, “Why aren’t
more people doing it?” . . . . We deliver an
electronic copy, or ‘eCopy.’ (News Release;
ncolleti@eCopy.com dated June 20, 2000).

7 We note that in this document, applicant used the designation
“™” to refer to several of its products but not, however, to the
eCopy apparatus. Rather, applicant uses the term descriptively
including as a plural, “Making eCopies.”
Ser. No. 76682275
10
Customer snapshot: Carolina Copy Services, Inc.:
“eCopy’s scanning capabilities did more than
allow us to keep the business we had in
litigation copying,” said LaGrou. “They actually
helped us expand the services we could offer into
areas that were growing in demand, popularity,
and value with all of our customers.” Making
eCopies at Carolina Copy Services is as easy as
running the photocopier.

The leader in creating electronic copies
(eCopies) of important paper business. . .
Sending an eCopy is as simple as making a paper
copy. Localbusiness.com March 20, 2001

From this representative sampling of the evidence
submitted by applicant, we simply cannot conclude that
applicant’s mark “eCopy” has acquired distinctiveness for
the goods for which it seeks registration, “software discs
and associated apparatus for enabling the scanning and
electronic distribution of documents over computer networks
and touch screen control panels for interfacing with such
software.” Rather, we find that applicant as well as
others use the term “eCopy” (as well as “ecopies”) in a
non-source-identifying manner. Applicant has not shown
substantial and exclusive use. Accordingly, with this
highly descriptive mark, applicant has not met its burden
of showing acquired distinctiveness. See Yamaha Int’l
Corp. v. Hoshino Gakki Co., Ltd., supra, 6 USPQ2d at 1008.
Decision: The refusal to register under Trademark Act
Section 2(e)(1) without acquired distinctiveness under
Section 2(f) is affirmed.