eMark-monitor Inc.

Trademark Trial and Appeal Board

Aug 17, 2006

No. 78199415 (T.T.A.B. Aug. 17, 2006)

Mailed:
August 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re eMarkmonitor Inc.
________

Serial No. 78199415
_______

Caroline L. Keller and Kevin T Kramer of Pillsbury Winthrop
Shaw Pittman for eMarkmonitor Inc.

John M. Wilke, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Hohein and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

eMarkmonitor Inc. has filed an application to register
the mark EARLY WARNING SYSTEM (in typed or standard
character form) for services ultimately identified as
“[e]lectronic monitoring services in the field of domain
name registration, where brand owners are notified of a
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 78199415
2
potential infringing domain name registration via
electronic mail” in International Class 45.1
The examining attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the ground that applicant's mark, if
applied to applicant's services, would be merely
descriptive of them.
Applicant has appealed the final refusal. Both
applicant and the examining attorney have fully briefed the
appeal. An oral hearing was held before the Board on
January 24, 2006.2
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information

1 Application Serial No. 78199415, filed January 2, 2003,
alleging a bona fide intention to use the mark in commerce under
Trademark Act § 1(b), 15 U.S.C. §1051(b).
2 Applicant mentioned, but did not submit a copy of, three third-
party registrations in its request for reconsideration (filed
October 29, 2004). Later, with its appeal brief, applicant
submitted a copy of the three third party registrations. The
examining attorney objected to the submission of the
registrations with applicant's brief, citing Trademark Rule
2.142(d). Applicant submitted a request to remand the
application back to the examining attorney with its reply so that
it could properly submit copies of the three registrations. In
an order mailed on September 16, 2005, the Board denied the
request to remand and stated that “[t]he copies of third-party
registrations which were submitted as an exhibit to applicant's
reply brief will not be considered.” We confirm that in view of
Trademark Rule 2.142(d), the registrations were not timely
submitted, and we do not further consider the three registrations
submitted initially with applicant's appeal brief, and again with
applicant's request to remand.
Ser No. 78199415
3
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). To
be merely descriptive, a term need only describe a single
significant quality or property of the goods or services.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Also, “[t]he perception of the relevant purchasing
public sets the standard for determining descriptiveness.
Thus, a mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service. On the other
hand, if a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods or services, then the mark is suggestive.” In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (citations and internal quotation marks
omitted).
The examining attorney has located the following
definition of the phrase “early warning system” in The
American Heritage Dictionary of the English Language (4th
ed. 2000): “1. A network of sensing devices, such as
satellites or radar, for detecting an enemy attack in time
to take defensive or counteroffensive measures. 2. A
Ser No. 78199415
4
system or procedure designed to warn of a potential or an
impending problem.”3 The examining attorney relies on the
second definition, which does not limit the phrase to a
particular context such as the military context, as is the
case in the first definition of the phrase.4
Applicant's services are most certainly part of a
“system … which is designed to warn” - opposer's
identification of services states that its electronic
monitoring services “notif[y brand owners] of a
potential[ly] infringing domain name registration.” Of
course, a “potential[ly] infringing domain name
registration” is a potential problem to any person or
entity that owns a domain name or is a “brand owner.”
Applicant has acknowledged this potential problem in its

3 The examining attorney submitted the definition for the first
time with his brief. Because the Board may take judicial notice
of dictionary definitions, University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), we take
judicial notice of the entire definition submitted by the
examining attorney.
4 In its reply brief at unnumbered p. 3, applicant points to the
first definition of “early warning system” and argues that “any
person in the United States, including consumers of Applicant's
products, would associate these words with [a] system providing
early warning of something in the nature of a disaster, or a
natural or physical threat.” Applicant's argument is not well
taken because applicant attributes limitations to the second
definition that are not there. The second definition, which is
the only definition the examining attorney relies on, only refers
a “potential or an impending problem,” without characterizing the
nature of the problem, and not “something in the nature of a
disaster, or a natural or physical threat.”
Ser No. 78199415
5
promotional material submitted in response to the first
Office action:
Over the past few months several high-profile
corporations have been victimized by cyber-
criminals who have redirected customers to
fraudulent websites resulting in identify theft,
consumer confusion and lost revenue.

Stolen business, angry customers, damaged
reputations and legal battles are just some of
the problems that can ensue if preemptive
measures are not taken.

Further, there is a temporal element to applicant's
services, which is highlighted by the appearance of the
word EARLY in applicant's mark and by the reference to
“email” in the identification of services. Email is an
extremely fast system for sending a message electronically
to another person. Applicant points out the temporal
nature of the services, i.e., that they are rendered
“early” or “within 24 hours,” in its promotional material,
stating:
[T]he MarkMonitor Early Warning System notifies
subscribers, via email within 24 hours, of the
registration of top-level domains (gTLDs) and
international domains (ccTLDs), which may be
confusingly similar to a company’s brand name or
trademark.

…

By utilizing MarkMonitor’s Early Warning System
corporations can proactively respond to planned
or potential domain name abuse.

Ser No. 78199415
6
Thus, the mark certainly describes a feature or
characteristic of applicant's services, which provide early
warning of an impending problem.
Applicant maintains that its mark is suggestive, not
descriptive, because it does not immediately convey
knowledge of applicant's services. According to applicant:
… a consumer would have to exercise mature
thought and follow a multi-stage reasoning
process when looking at the mark EARLY WARNING
SYSTEM to determine that the services involve
electronic monitoring of domain name registration
or notification of a potentially infringing
domain name registration via electronic mail.
There is no indication by the mark alone that
domain name registrations or electronic mail are
involved with the services. The consumer would
have to first relate the words “early warning
system” with some sort of notification service.
Then the consumer would have to choose from among
the many notification services to determine that
electronic mail was involved. Finally, the
consumer would have to pull the relation to
domain name registrations out of the blue,
because there is not even a slight indication
from the mark that domain name registrations are
involved. Thus, assuming it is even possible for
a consumer to determine the characteristics of
Applicant's services from the mark EARLY WARNING
SYSTEM, it would take mature, multi-step
reasoning to come to that determination.

Brief at pp. 6-7.
Applicant's argument is not persuasive because
applicant's mark need not indicate that “domain name
registrations or electronic mail are involved with the
services” to immediately convey information of applicant's
Ser No. 78199415
7
services. Whether a term is merely descriptive is
determined not in the abstract or in a vacuum, 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. In re Bright-Crest, Ltd., 204 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).
See In re American Greetings Corporation, 226 USPQ 365
(TTAB 1985).
The examining attorney also relies on various articles
taken from the Nexis database to support his refusal. He
has conducted several searches for various terms used in
connection with “early warning system” and “warning
system.” In a search for “early warning system” and
“trademark,” the examining attorney has located the
following two excerpts of Nexis stories:
Ser No. 78199415
8
Intellectual Property Today
November 1996
… Thomson, the world leader in trademark and
copyright services, introduced its T&T(R)
Trademark Management Service at the INTA
Paralegal Forum (September 16-18) held in Crystal
City, VA. The service is designed to act as an
early warning system for the trademark attorney,
paralegal, or marketing brand manager.

The Recorder
March 18, 1996
Datalytics, a Chicago-based Internet consulting
company, this month launched a service that
monitors the use of its clients’ trademarks and
brand names on the Internet for possible
infractions.

“It’s an early warning system that really alerts
clients to potential abuse of trademarks or brand
names in cyberspace,” says company spokesman Sam
Tatel.5

Applicant states that these excerpts and others
submitted by the examining attorney with his first Office
action which use the phrase “early warning system” “do not
give any impression that the service is related to the
Applicant's service.” Brief at pp. 9-10. According to
applicant, “accompanying words” are needed “to inform the
reader what the service is”; and that “[e]ach of these
articles uses the word ‘early warning system’ in varied

5 The examining attorney also located an excerpt from the Bangkok
Post containing the words “trademarks” and “early warning
system.” This excerpt has no probative value because there is no
evidence that it was circulated in the United States. As noted
above, the determination of mere descriptiveness must be based on
the perception of the relevant consuming public, which is located
in the United States. MBNA America Bank, 67 USPQ2d at 1780.

Ser No. 78199415
9
ways and use[s] the word in an ambiguous manner. They are
not used in a manner that is descriptive of one thing,
certainly not of Applicant's services under its mark.”
Brief at p. 10. We disagree. These two excerpts, albeit
ten years old, are significant because they show use of
“early warning system” with respect to the services
provided by two different entities that are the same or
similar to those services applicant has identified in its
identification of services. The meaning of the phrase
“early warning system” is immediately apparent in these
excerpts, and no explanation is needed nor provided in
order to determine the meaning of the phrase in the context
of the services referred to in the articles.
In a Nexis search for “electronic mail” and “warning
system,” the examining attorney also located the following:
The Boston Globe6
April 15, 1999
The memo was distributed to military bases and
other sensitive federal installations, such as
nuclear weapons labs, through a special
electronic mail warning system, officials said.

6 Three duplicate excerpts from the same Boston Globe story are
included in the record. Two are from two different publications
and one is from a newswire service. Also, the examining attorney
has submitted an excerpt from the April 15, 1999 edition of the
Chicago Sun-Times, which is substantially similar to the Boston
Globe article. Because these excerpts are duplicates or near
duplicates, we do not repeat them herein.

Ser No. 78199415
10
Additionally, in a Nexis search for “email” and “warning
system,” the examining attorney located the following:7
The Atlanta Constitution Journal
January 29, 2004
Rus Cooper of TruSecure Corp. was more blunt
about the government’s e-mail warning system
[regarding a federal initiative to warn computer
users about Web Threats].

The Oregonian
December 31, 2003
The city has an e-mail warning system that
flashes messages to a list of subscribers “one
second after we get information about a problem,”
he said.

Sun-Sentinel
December 24, 2004
He said he would like to see the city create an
e-mail warning system, so all residents with e-
mail addresses can be alerted during emergencies.

7 The examining attorney submitted additional excerpts, but they
do not support the examining attorney’s contention that the mark
is merely descriptive. Specifically, the excerpt dated May 9,
1994 from InfoWorld refers to “Early Warning Systems” in a
trademark sense (“This gives SMART the capability to pass alerts
to Frye’s Net Ware Early Warning Systems that monitors network
service activities and performance”); and the excerpt dated March
28, 1994 from Network World is irrelevant to the issues herein
(“Target Alert is a fault management package that issues warnings
of system failures ….”).
Also, the excerpt from PR Newswire, dated May 5, 2003,
submitted by the examining attorney with his denial of
applicant's request for reconsideration, does not support the
examining attorney’s refusal; it discusses applicant and its
“[n]ew features like … Early Warning System and Domain
Consolidator …,” and uses “Early Warning System” in a trademark
sense. Moreover, there is nothing in the record to indicate that
this wire report was distributed; thus, it is entitled to only
minimal probative value in that we cannot judge the public's
exposure to the use of the phrase in the newswire. See In re
Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003).

Ser No. 78199415
11
The Indianapolis Star
June 17, 2002
He announced the creation of a telephone and e-
mail warning system to alert parents and other
residents when sewer overflows are expected in
their neighborhood.8

Applicant argues that these excerpts with “electronic
mail” or “email” proximate to “warning system” do not
include the entire phrase “early warning system”; that
“[t]hese uses show that in order to describe to the
consumer the use of electronic mail in a service, the term
‘electronic mail’ or ‘email’ must be included”; and that
the excerpts do not “describe what type of service is being
offered in conjunction with these phrases.” Brief at p.
10. Applicant, at p. 11 of its brief, emphasizes that the
articles “are not used in a manner that is descriptive of
one thing, certainly not of Applicant's services under its
mark.” While these excerpts do not use all of the wording
of the mark and do not show use of “warning system” for
services that are the same as, or similar to, applicant's
services, they still have some probative value because they

8 The examining attorney also submitted several additional
similar excerpts using “email” and “warning system,” which we
have considered. Two of these additional excerpts are from
newswire services. We have considered these excerpts, but we
have given the newswire excerpts minimal probative value because
there is nothing in the record to indicate that these newswire
reports were distributed. See Cell Therapeutics Inc., 67 USPQ2d
at 1798.

Ser No. 78199415
12
show that email or electronic mail – which is included in
applicant's identification of services - is used as part of
a “warning system” “of a potential or an impending
problem.”
Applicant also maintains that “early warning system”
is not merely descriptive of applicant's services because
the phrase is defined broadly and the excerpts from the
Nexis stories show that the phrase can be used in
conjunction with a large number of goods and services.
Brief at p. 9. Further, applicant compares this case to In
re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490
(Fed. Cir. 1988), where, according to applicant, the
Federal Circuit held that “TECHNOLOGY was not descriptive
of computer components, because even though the term
‘technology’ is used in connection with computer products,
many other goods possibly may be included within the broad
term ‘technology.’” Applicant states that “[a]s in In re
Hutchinson, many other unrelated goods possibly may be
included within the broad term ‘early warning system.’”
Brief at p. 7. We are not persuaded by applicant's
arguments and its comparison to Hutchinson Technology.
Applicant has not introduced any evidence of any other uses
of “early warning system” and the evidence submitted by the
examining attorney does not demonstrate widespread use of
Ser No. 78199415
13
“early warning system.” Also, as noted above, whether a
term is merely descriptive is determined 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. Bright-Crest, 204 USPQ at 593.
Upon consideration of the foregoing and the evidence
of record in this case that we may properly consider, we
reject applicant's contention that “early warning system”
does not convey immediate knowledge of the services and
requires consumer imagination to reach a conclusion as to
the nature of the services. “Early warning system” is
defined in an English language dictionary, and its
definition is not restricted to a particular context such
as the military context. The excerpts of record with
“early warning system” in the “brand” or trademark context
use this phrase in a descriptive manner for a service that
notifies others of “abuse” or unauthorized use by others of
trademarks “in cyberspace.” Also, many of the Nexis
excerpts show that email or electronic mail is used as part
of a “warning system” to notify people by email of an
Ser No. 78199415
14
emergency or dangerous condition. In view of the
foregoing, we conclude that the examining attorney has
established prima facie that the phrase “early warning
system” when used in connection with “electronic monitoring
services in the field of domain name registration, where
brand owners are notified of a potentially infringing
domain name registration via electronic mail,” immediately
describes, without speculation or conjecture, a significant
feature or characteristic of applicant's services and hence
is merely descriptive. Applicant has not rebutted the
examining attorney’s prima facie showing through its
arguments or evidence.
Decision: The refusal to register is affirmed.