iArchives, Inc.

Trademark Trial and Appeal Board

Apr 5, 2016

No. 85598798 (T.T.A.B. Apr. 5, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re iArchives, Inc.
_____

Serial No. 85598798
_____

Jordan A. LaVine and Sandra Lex of Flaster/Greenberg P.C. for iArchives, Inc.

Eli J. Hellman, Trademark Examining Attorney, Law Office 112 (Angela Bishop
Wilson, Managing Attorney).
_____

Before Mermelstein, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Applicant, iArchives, Inc., filed an application for registration on the
Principal Register of the mark shown below:1

1 Application Serial No. 85598798 was filed on April 16, 2012 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), stating June 2010 as the date of first use and first use in
commerce. The colors yellow, orange, blue, green and black are claimed as a feature of the
mark. Applicant claimed ownership of U.S. Reg. No. 2755063 for the mark iARCHIVES in a
different stylized form; however, that registration was cancelled in 2014.
Serial No. 85598798

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The services identified in the application (as amended) are:
Conversion of data or documents from physical to
electronic media; Digitization of documents, in
International Class 42.
The Examining Attorney required, as a condition of registration, that
Applicant disclaim the exclusive right to use IARCHIVES apart from the mark as
shown, on the ground that this wording is merely descriptive of Applicant’s services
and, therefore, an unregistrable component of the mark under Trademark Act
Section 6, 15 U.S.C. § 1056. Applicant argued that the wording of its mark was not
merely descriptive and claimed, in the alternative, that IARCHIVES had acquired
distinctiveness and was entitled to registration under Section 2(f), 15 U.S.C.
§ 1052(f). The Examining Attorney maintained his requirement of a disclaimer on
the ground that the wording in the mark is merely descriptive of Applicant’s
services and that Applicant’s evidence was inadequate to demonstrate that it had
acquired distinctiveness. When the Examining Attorney made his refusal final,
Applicant appealed to this Board and simultaneously requested reconsideration.
The Examining Attorney denied the request for reconsideration and this appeal
proceeded.
The Director of the USPTO “may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.” Trademark Act Section
6(a). The USPTO may require a disclaimer as a condition of registration if the term
at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Serial No. 85598798

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A term is merely descriptive of 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 services. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a term is merely
descriptive is determined in relation to the services for which registration is sought
and the context in which the term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
we evaluate whether someone who knows what the services are will understand the
term to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A term need
not immediately convey an idea of each and every specific feature of the services in
order to be considered merely descriptive; it is enough if it describes one significant
attribute, function or property of the services. See In re Gyulay, 3 USPQ2d at 1010;
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973).
First, we consider whether the term IARCHIVES is merely descriptive and,
therefore, an “unregistrable component” of Applicant’s mark, as the Examining
Attorney contends. The Examining Attorney has made of record the following
relevant dictionary definitions:

Serial No. 85598798

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archive
n.

1. often archives A place or collection containing records,
documents, or other materials of historical interest: old
land deeds in the municipal archives.

2. Computers
a. A long-term storage area, often on magnetic
tape, for backup copies of files or for files that are no
longer in active use.
b. A file containing one or more files in compressed
format for more efficient storage and transfer.

3. A repository for stored memories or information: the
archive of the mind.
…2
*****
archive
NOUN
1. [OFTEN PLURAL] a collection of historical documents and
records about a place, organization, etc.
a. a place where you store historical documents and
records
2. …
a. COMPUTING a copy of information that is put on the
Internet so that other people can use it.
3. COMPUTING a collection of computer files that have been
saved together in compressed form.3
*****

2 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, at
http://www.ahdictionary.com, Office Action of August 6, 2012 at 2.
3 MACMILLAN DICTIONARY, at http://www.macmillandictionary.com, Office Action of
January 6, 2014 at 7.
Serial No. 85598798

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i

(1) A prefix for technical terms that may connote Apple’s
iDevices (see definition #3 below), the Internet or
information.
(2) See IBM i.
(3) A brand prefix on Apple’s mobile products (iPod,
iPhone, iPad), as well as third-party accessories: for
example, Apple docks are called “i-docks.” Sometimes, the
“i” is used creatively such as “i-whatever” when referring
to Apple devices. See iDevice.4
*****
I-anything

An “I” placed before a word or phrase usually stands for
“Internet.” Unlike e-anything, where the “e” actually
describes something that’s electronic (such as e-journal) I-
anything is almost always used for some kind of
marketing program or media hype.5

*****
I-commerce
also seen as “iCommerce” “i-commerce”
An umbrella term that describes any form of revenue
generated via use of the Internet. It is spelled with a
capital “I” because that stands for Internet commerce, and
Internet is capitalized. It includes B2B, B2C, e-commerce,
d-commerce, and m-commerce.6

4 Computer Desktop Encyclopedia (2013), at http://encyclopedia2.thefreedictionary.com,
Office Action of January 6, 2014 at 10.
5 NetLingo: The Internet Dictionary (2002), Office Action of July 28, 2014, 7 TTABVUE 5.
6 Id.
Serial No. 85598798

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The Examining Attorney has also made of record an entry for the search
“What does I stand for?” at http://www.acronymfinder.com. That entry indicates
that “I” may stand for 47 terms, including “Internet.”7
The Examining Attorney has submitted three discussions of the prefix “i-,”
found on the internet. Relevant excerpts are set forth below:
1. Wikipedia entry for “Internet-related prefixes”:
Internet-related prefixes include e-, i-, cyber-, info-,
techno-, and net-, which are prefixed to a wide range of
existing words to form new, Internet-related flavors of
existing concepts. Additionally the adjective virtual is
often used in a similar manner.
…
i- is not a generic prefix used to describe a type of service
or product; rather, it is used in the branding of individual
products. The i- prefix is especially connected to Apple
Inc., who employed it for their iMac and iBook and now
uses many product names starting with i-, including iPod,
iTunes, iPhone, iLife and others. Apple initially said the i
stood for “Internet.”
Despite its close association with Apple, the i- prefix has
been used by other companies as well, such as Google
(iGoogle) and the BBC (iPlayer). It has also been used
extensively by shareware and freeware developers in the
branding of their products, and even by non-IT companies
for their online sites, such as icoke.com. iCarly is a
television show in which the main character hosts her
own web show.8
*****

7 Office Action of May 6, 2013 at 5-7.
8 At http://en.wikipedia.org, Office Action of March 11, 2013 at 8-10 (footnotes omitted).
Serial No. 85598798

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2. “Popular Domain Names Prefixes – ‘E’ and ‘I’”:
In addition to a domain placing value on the shortness of
the word, ease to spell, commercial appeal, and organic
capacity to generate natural traffic, today’s domain names
are being valued for the branding potential. The domain
name sale iReport, although not an organic or dictionary
term alone, is actually preferred as a highly brandable
term, in that it has a popular pre-fix “I” which indicates
the “report” to be online.
…
The two primary prefixes are “E”, for electronic, and “I”,
for internet. Both indicate the word or phrase to be
accessible online. Because of that, in terms of branding,
an I or e combined with a commercial term are highly
desirable. In domain sales typically an e has been
preferred, and I slightly less in terms of demand.
…
Someone could promote “iReport” as a brand, and
assuming it was a world class brand, visitors would know
they could find it at “iReport.com” without seeing the
.com. However, if it was a .net, it would be wise to state
iReport.net. This option to simply state the name of the
company or entity is particularly valuable in that it is
brief and clear in indicating that a report can be either
made or found on the “i”nternet.9
*****

3. “iPad = iProblem?”:
The use of the “i” prefix is very common among trademark
owners as an abbreviation for “information” or “Internet”
(among [illegible]ers). For this reason, there will always
be third parties who are using the same or similar marks
on similar goods and [illegible]rvices. As a trademark

9 At http://www.luckyregister.com, Id. at 11-12.
Serial No. 85598798

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attorney, it is always best to advise clients to choose a
mark which is either fanciful …10
Finally, the Examining Attorney submitted copies of fourteen U.S.
registrations on the Supplemental Register for various types of online services.11
The marks in those registrations are:
ICIRCULAR for “Computer services, namely, providing
temporary use of online non-downloadable software for
the selection, extraction, search and retrieval of
advertisements, promotions, coupons, and sales of
merchandise and services”;12
ITRANSCRIBE for “Application service provider (ASP)
featuring software for use in medical transcription;
providing temporary use of a web-based software
application for medical transcription; providing temporary
use of on-line nondownloadable software and applications
for medical transcription”;13
IQUOTE for, inter alia, “Technical environmental
consulting in the field of environmental engineering;
providing a website featuring non-downloadable software
featuring rate quotes for leasing of renewable energy
equipment for use in converting renewable resources into
power, rate quotes for leasing of renewable energy
equipment, and rate quotes for cash sales, installation
and maintenance of renewable energy generation
equipment and of renewable energy generation
equipment”;14
IHOMEPAGE for “Hosting websites on the Internet;
website design and development for others”;15

10 At http://www.translegal.com, Office Action of August 6, 2012 at 4. (lacunae in original).
11 Office Action of January 6, 2014 at 23-61.
12 Reg. No. 4116347, registered March 20, 2012.
13 Reg. No. 4027231, registered September 13, 2011.
14 Reg. No. 4007809, registered August 2, 2011.
15 Reg. No. 4155968, registered June 5, 2012.
Serial No. 85598798

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IACCOUNTING for “Providing a website featuring non-
downloadable software for the management of inventory;
providing a website featuring non-downloadable software
used to track and manage online payments and payment
receivables; providing a website featuring non-
downloadable software used to convert data into different
file formats”;16
IDATAHUB for, inter alia, “Computer service, namely,
acting as an application service provider to host computer
application software for providing an on-line database in
the field of transaction processing to provide statistical
analysis, and produce notifications and reports; providing
temporary use of a web-based software application that
provides real-time, integrated business management
intelligence by combining information from various
databases and presenting it in an easy-to-understand
user interface; providing online non-downloadable
software for operating an on-line database in the field of
transaction processing to provide statistical analysis, and
produce notifications and reports; providing online non-
downloadable software to automate data warehousing and
data processing”;17
IFOODDIARY for, inter alia, “Providing a web site
featuring technology that enables users to receive help in
weight loss management, managing diet and nutrition”;18
ISCANONLINE for, inter alia, “Computer services,
namely, providing a web-based interface for scanning,
detecting, quarantining and eliminating viruses, worms,
trojans, spyware, adware, malware and unauthorized
data and programs on computers and electronic
devices”;19

16 Reg. No. 4155979, registered June 5, 2012.
17 Reg. No. 4355650, registered June 18, 2013.
18 Reg. No. 4315037, registered April 2, 2013.
19 Reg. No. 4434058, registered November 12, 2013.
Serial No. 85598798

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ILEGAL for “legal document preparation services and
providing general legal information via a website on
global computer networks”;20
IBENCHMARK for, inter alia, “Providing online,
downloadable and non-downloadable software for
benchmarking of performance metrics, best practices and
technology for use in business analysis and analytics,
business management and business reports and
publications; benchmarking of personal, medical and
other non-business metrics for comparison, research and
informational purposes”;21
ILIGHTING MANAGER for “Software as a service that
designs, integrates and implements energy saving
technology and management controls for individual light
fixtures”;22
ILAUNCH for “Business organization consulting, namely,
company organization consultancy and business
management consultancy; business management
consultancy; business organization consultancy; business
management consultancy services; professional business
consultancy; systemization of data in computer databases;
data processing services, namely, systemization, namely,
systematic arrangement of data in computer databases”
in International Class 35 and “Software as a service
(SAAS) featuring project management software tools used
by pharmaceutical branding and marketing teams to
manage product release activities”;23
IFEEDBACK for “providing temporary use of on-line non-
downloadable software for use in rating, providing
comments, and giving feedback on businesses”;24
ICITY for “platform as a service (PAAS) featuring
computer software platforms for use in connection with
mobile devices and social media for the purpose of

20 Reg. No. 4306982, registered March 19, 2013.
21 Reg. No. 4322387, registered April 16, 2013.
22 Reg. No. 4355684, registered June 18, 2013.
23 Reg. No. 4420062, registered October 15, 2013.
24 Reg. No. 4452719, registered December 17, 2013.
Serial No. 85598798

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providing a conduit for citizens to improve
communication, efficiency and effectiveness of city
government, provide both citizens and visitors easy access
to city information, a calendar of scheduled city events,
available services, and activities, provide business listings
to enable citizens and visitors to quickly discover and
locate business, restaurants, service organizations and
allow immediate emergency notifications to be
communicated to citizens.”25
The Examining Attorney contends that the term “IARCHIVES” in the mark
is merely descriptive because it immediately conveys the idea that the archives
Applicant creates are accessible over the Internet. Given the commonly understood
meaning of the term “archives” as supported by the dictionary definitions of record,
it has been shown, and Applicant does not dispute, that “archives” is merely
descriptive of Applicant’s services. Applicant converts paper documents to digital
form on behalf of others, creating a collection of historical documents, or database
archives, in which the digitized versions of the documents are stored. Applicant
argues, however, that the average consumer will not immediately perceive the “i” in
the term “IARCHIVES” as merely descriptive of a feature or characteristic of
Applicant’s services; therefore the term “IARCHIVES” does not need to be
disclaimed.
Applicant’s services are: “Conversion of data or documents from physical to
electronic media; Digitization of documents.” Applicant converts a customer’s data,
such as documents on microfilm or paper, from their original physical condition to
electronic (digital) media by transforming the data into a collection of material that

25 Reg. No. 4401990, registered September 10, 2013.
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is searchable and stored in a database. The record shows that while the prefix “i-”
may also be used as an abbreviation for other terms that start with the letter “i,” it
is generally used to represent the term “Internet” when used in association with
digital data, since digital data is typically searchable and can be accessed online.
While Applicant argues that “online” does not mean “over the Internet,” the term
“online” is defined as “referring to locations on or use of the Internet”;26 a fuller
definition is: “connected by computer to one or more other computers or networks,
as through a commercial electronic information service or the Internet.”27 Applicant
argues that its purpose is not to create Internet-accessible databases for its
customers, but only to create the database itself, which would “more typically reside
on a desktop computer or be accessible through a secure corporate ‘Intranet’ ” than
it would be accessible over the Internet.28 Nonetheless, Applicant promotes its
databases as being available “online,” using the term to refer to the Internet. See,
e.g., Applicant’s website page “About iArchives,” (“iArchives’ vision is to be the
world leader in transforming microfilm and other print content into searchable,
digitized, online databases.”)29; and the June 30, 2014 press release “caseSHARE

26 THE AMERICAN HERITAGE® NEW DICTIONARY OF CULTURAL LITERACY Third Edition,
(2005) by Houghton Mifflin Company, retrieved March 14, 2016 from
http://www.dictionary.com. The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist
in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375,
1377 (TTAB 2006).
27 RANDOM HOUSE DICTIONARY, Random House, Inc. (2016), retrieved March 14, 2016 from
www.dictionary.com.
28 Applicant’s Brief p. 5, 9 TTABVUE 9.
29 At http://www.iarchives.com, Office Action of March 11, 2013 at 2.
Serial No. 85598798

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and iArchives Partner to offer Enhanced Search Functionality For Litigation
Documents,” (“[Applicant] specializes in producing fully searchable, online
documents from paper and microfilm.”).30 Applicant markets its own military
records website, Footnote.com, as being available over the Internet,31 and uses the
term “online” to describe the web-based collection available at the website as: “The
Largest Online U.S. Civil War Collection.”32 Applicant advertises that it “operates
Footnote.com, the leading U.S. military record resource on the web with more than
72 million records online.” Applicant has also directly advertised that it markets its
custom databases as being “searchable over the internet or an intranet.”33 Applicant
promoted its collaboration with the Library of Congress as being designed to
“develop and [sic] Internet-based, searchable database of U.S. newspapers now in
the public domain.”34 In these promotional materials, as shown, Applicant
references its presence on the Internet and its marketing of its custom databases as
intended for access over the Internet. Thus when prospective customers encounter
the term IARCHIVES in Applicant’s mark in association with Applicant’s
conversion and digitalization services, they will immediately perceive that
Applicant’s services include the development of database records that are accessible
online, i.e., are Internet archives.

30 At http://www.iarchives.com, Request for reconsideration of July 7, 2014, 4 TTABVUE 28.
31 4 TTABVUE 14 (“The collection will be available on iArchives’ military records website,
Footnote.com, home of more than 72 million historical records.”).
32 Office Action of March 11, 2013 at 3.
33 Office Action of March 11, 2013 at 2.
34 Request for reconsideration of July 7, 2014 at 23.
Serial No. 85598798

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Applicant further argues that the “i-” prefix may connote various other
words, such as information, interactive, or Intranet, and therefore consumers will
not immediately perceive that Applicant’s services are related to the Internet.
Applicant points to the fact that the AcronymFinder website listed multiple
meanings for the letter “i” in addition to “Internet,” and the Computer Desktop
Encyclopedia defines the letter “i” as an abbreviation for “the Internet or
information.”35 Applicant argues that the “landing page”36 on its website
“prominently shows the words, ‘institution,’ ‘index,’ ‘imagine,’ and ‘interactive’” as
alternative words that begin with the letter “i.”37 While alternate words beginning
with the letter “i” exist, we do not determine the significance of the letter “i” in a
vacuum. None of the other words that start with the letter “i” – whether taken from
AcronymFinder, the Computer Desktop Encyclopedia, or Applicant’s website – are
used in such a manner that would identify them as associated with the term
“archives.” None of the other words is thus directly relevant to Applicant’s archive
services. The evidence supports the Examining Attorney’s conclusion that an
average member of the purchasing public will view the letter “i” as an abbreviation
for “internet,” and Applicant has not pointed to any record evidence to the contrary.
As noted supra, the Examining Attorney submitted fourteen third-party
registrations for i-formative marks registered for services rendered on the “internet”

35 Computer Desktop Encyclopedia (2013), Office Action of January 6, 2014 at 10.
36 Appeal Brief, p. 5, 9 TTABVUE 9.
37 Id.
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or “online.”38 Each registered mark consists of the letter “I” and a term descriptive
of the recited services. These third-party registrations further support the finding
that the prefix “i-” in Applicant’s mark will be readily perceived as an abbreviation
for “Internet.” Third-party registrations can be used to show the meaning of a term
in a particular field and are probative evidence on the issue of descriptiveness
where the relevant word or term is disclaimed, or the mark is registered on the
Supplemental Register. “Such third party registrations show the sense in which the
word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.” Institut National
Des Appellations D’Origine v. Vintners International Co., 958 F.2d 1574, 22
USPQ2d 1190, 1196 (Fed. Cir. 1992) (third-party registrations found to be
“persuasive evidence”). See also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (third-party registrations have
“evidentiary value … to show the sense in which … a mark is used in ordinary
parlance”); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-5
(CCPA 1976) (even if “there is no evidence of actual use” of “third-party
registrations,” such registrations “may be given some weight to show the meaning of
a mark in the same way that dictionaries are used”).
Here, the third-party registrations are registered on the Supplemental
Register. A registration on the Supplemental Register establishes prima facie that,
at least at the time of registration, the registered mark was not distinctive for the

38 Office Action of January 6, 2005 at 23-61.
Serial No. 85598798

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goods or services for which it is registered, and may be taken as an admission by
these registrants that the marks were descriptive when registered. Otter Prods.
LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1255 (TTAB 2012) (“Because the
mark in Opposer’s Supplemental Register Registration is presumed to be merely
descriptive, and opposer has introduced no evidence of use of its mark sufficient to
prove that its alleged mark has acquired distinctiveness, it cannot prevail based
solely on its ownership of this registration.”). See also In Re Buty-Wave Prods. Co.,
Inc., 198 USPQ 104, 107 (TTAB 1978) (“As to third-party registrations, it is well
recognized that a registration on the Supplemental Register may be considered to
establish that at least at the time of registration, the registered mark possessed a
merely descriptive significance. If we had any doubt as to the descriptiveness of the
letter ‘E’ in applicant’s mark as used in association with its toilet soap, it would be
dispelled by the third-party registrations which the Examiner has made of record,
some of which were on the Supplemental Register for composite marks which
included the letter ‘E’ as applied to cosmetic products; the others, for various
cosmetics including toilet soap, while registered on the Principal Register, included
a disclaimer of the letter ‘E.’”); In re Hunke & Jochheim, 185 USPQ 188, 189 (TTAB
1975) (Supplemental Register registration “may be considered to establish prima
facie that, at least at the time of registration, the registered mark possessed a
merely descriptive significance.”).
The third-party marks thus corroborate our finding that, when used in
connection with the services of providing “online” downloadable or non-
Serial No. 85598798

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downloadable software or other technology, the likely public perception of the prefix
“i” in marks comprising the prefix plus a descriptive term for such services is as an
abbreviation for “Internet.” Applicant digitizes documents and creates databases
downloadable from the Internet, enabling Applicant and its clients to generate a
presence on the Internet.39 The third-party registrations thus corroborate the
meaning of the prefix “i” as “Internet” in Applicant’s mark.
The evidence from Applicant’s website, the dictionary definitions, and the
third-party registrations demonstrate that the term “IARCHIVES” in Applicant’s
mark is merely descriptive of Applicant’s conversion and digitization services.
Prospective purchasers of Applicant’s services, confronted with “IARCHIVES” used
in conjunction therewith, would, without need of thought, imagination or
perception, be immediately apprised that a significant feature of Applicant’s service
is to enable physical records (data and documents) to be digitized and placed in
searchable collections for access and viewing via the Internet.
Acquired Distinctiveness
Applicant contends that the term “IARCHIVES” has acquired distinctiveness
in association with its services. The burden is on Applicant to show that
“IARCHIVES” has acquired distinctiveness. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988). The
type and amount of evidence that is required to show acquired distinctiveness

39 The prefix “i” has been used as an abbreviation for “Internet” when used in connection
with companies that have a presence on the Internet, even those that are “non-IT
companies” such as “icoke.com.” At http://en.wikipedia.org, attached to Office Action of
March 11, 2013 at 10.
Serial No. 85598798

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varies with the nature of the mark, or in this case, the merely descriptive portion of
the mark. In some cases a declaration that the mark has been in substantially
exclusive and continuous use as a mark for the five years before the claim of
distinctiveness is made is sufficient. See Trademark Act Section 2(f). Applicant
submitted such a five-year statement as part of Applicant’s request for
reconsideration filed April 1, 2013. Applicant further alleges that it and its
predecessors have been using the term “IARCHIVES” as a service mark since at
least as early as May 2000.40
“The greater the descriptiveness or non-distinctiveness of the proposed mark,
the greater the burden is on an applicant to demonstrate acquired distinctiveness.”
In re Lorillard Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011). “[C]opying,
advertising expenditures, sales success, length and exclusivity of use, unsolicited
media coverage, consumer studies (linking the name to a source)” may be relevant.
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005).
Here, the term “IARCHIVES” is so descriptive of Applicant’s services that the
five-year use statement is insufficient to support a finding of acquired
distinctiveness. Moreover, there is an internal inconsistency in the record given that
Applicant alleged June 2010 as the date of first use in the application but filed its
five-year use statement in 2013, less than five years from this date (and only one
year after the filing date). While the evidence of Applicant’s use in the record shows
plausible use as early as 2005, it does not support a finding that such use was

40 Request for reconsideration of April 1, 2013 at 1.
Serial No. 85598798

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substantially exclusive and continuous. In further support of its claim of acquired
distinctiveness, Applicant has submitted:
1. A copy of Applicant’s expired Registration No. 275506341 for the mark
;
2. An undated “case study” regarding Applicant’s use of particular scanning
equipment;42
3. A news article announcing Applicant’s acquisition by Ancestry.com Inc. in
2010;43
4. Search results from a Google search for the term “iarchives”;44 and
5. Internet articles and news wire stories about Applicant’s business.45
The evidence is insufficient to support Applicant’s claim that it has used
“IARCHIVES” since May 2000 or that its use has been substantially exclusive and
continuous. Applicant’s prior registration was cancelled on March 28, 2014 and is
therefore evidence only of the fact that it issued; it is not evidence that the mark (or
the term “iarchives” without the design element) was ever used. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989) (cancelled registration does not provide constructive notice of

41 Registered with a disclaimer of “IARCHIVES.”
42 Request for reconsideration of April 1, 2013 at 2-3.
43 Id., “Ancestry.com to finalize purchase of iArchives,” DESERET NEWS, Sept. 23, 2010.
44 Request for reconsideration of July 7, 2014 at 3-12.
45 Id., at 14-29.
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anything); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).
Any benefits or presumptions conferred by the registration were lost when the
registration was cancelled.
The “case study” is entitled to very little weight as it is undated, and it is
unclear whether it was actually provided to Applicant’s potential customers, and if
so, by what means. See City National Bank v. OPGI Management GP Inc./Gestion
OPGI Inc., 106 USPQ2d 1668, 1676 (TTAB 2013) (third-party brochure that
advertised third-party’s ability to assist respondent in a pilot program to improve
respondent’s TREASURYNET database did not evidence use of said mark by
respondent; reference in the brochure to “users” of respondent’s database referred to
users of the pilot database “and not actual customers of any services rendered by
respondent.”).
The earliest piece of dated evidence is a press release announcing Applicant’s
selection by the Library of Congress, issued June 3, 2005.46 In addition to the 2005
press release, there are two press releases from 2006 and one from 2011. These
press releases focus on the collaborations between Applicant and its partner
companies to create digital databases for those companies. We give this evidence
little weight. There is no information about how widely the press releases were
distributed or how many prospective consumers may have seen any of them. In re
Tennis Indus. Ass’n, 102 USPQ2d 1671, 1682 (TTAB 2012) (“applicant has provided
insufficient information to show the extent to which [its press release was]

46 Id., at 23-24.
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disseminated to the relevant public such that we may conclude whether [it] has
contributed to the public’s recognition of TENNIS INDUSTRY ASSOCIATION as a
mark”). Likewise, the 2010 news article announcing Ancestry.com’s purchase of
Applicant does not prove Applicant’s market share or renown; there is also nothing
to indicate the extent to which the article was circulated. The 2007 “NARA-
iARCHIVES Digitization Agreement”47 is a private document that does not evidence
the public’s awareness of Applicant’s mark.
Finally, the search summary of Google “hits” are not probative of consumer
recognition of Applicant’s mark because such a list does not show the context in
which the term IARCHIVES is used on the listed web pages. Even if we were to
consider the evidence as showing that a majority of references including the term
“iarchives” are related to Applicant, the Google search results lack sufficient context
to assess consumer public perception of the term and whether it has acquired
distinctiveness. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007) (Google search results that provided very little context
of the use of ASPIRINA deemed to be “of little value in assessing the consumer
public perception of the ASPIRINA mark”); In re Tea and Sympathy, Inc., 88
USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated Google search results entitled to
little probative weight without additional evidence of how the searched term is
used). However, to the extent the search summary results may be probative, in
several instances the abbreviated text provided with the search results appears to

47 Id., at 14-15.
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reinforce the descriptive nature of the term by emphasizing the Internet-related
nature of Applicant’s services. For example, the snippet displayed with a link to
Wikipedia identifies Applicant as “an Internet company.” Accordingly, the search
summary results, to the extent they have any probative value, do not support
Applicant’s claim to acquired distinctiveness. Although Applicant may be the only
company using the term “IARCHIVES,” Applicant has not shown that the term has
acquired distinctiveness. In this regard, we note Applicant failed to provide any
sales or advertising figures or other indicia of market share or consumer perception.
Accordingly, we find the term “IARCHIVES” in Applicant’s mark to be merely
descriptive of Applicant’s recited services, and Applicant has not shown that the
term has acquired distinctiveness. In view thereof, Applicant’s mark
is not entitled to registration absent the entry of a
disclaimer to the term “IARCHIVES.”
Decision: The refusal to accept Applicant’s claim of acquired distinctiveness
under Trademark Act Section 2(f) is affirmed, and the requirement for a disclaimer
of “IARCHIVES” under Section 6 is affirmed. However, if Applicant submits the
required disclaimer of “IARCHIVES” within thirty days, this decision will be set
aside only as to the affirmance of the disclaimer requirement.48 See Trademark
Rule 2.142(g).

48 The standardized printing format for the required disclaimer text is as follows: “No claim
is made to the exclusive right to use “IARCHIVES” apart from the mark as shown.” TMEP
§ 1213.08(a)(i).
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MASIELLO, Administrative Trademark Judge, dissenting:
I respectfully dissent from the Board’s decision and would reverse the
Examining Attorney’s requirement of a disclaimer of the term IARCHIVES.
I agree that the terms “online archives” and “internet archives” are merely
descriptive of Applicant’s services. I also agree that, if Applicant’s mark were
understood by the relevant public to mean “online archives” or “internet archives,”
then the evidence of market recognition submitted by Applicant would fall far short
of demonstrating acquired distinctiveness within the meaning of Section 2(f).
However, I do not agree that the Examining Attorney has made out a satisfactory
prima facie showing that the term “iarchives” would be understood by the relevant
public to mean “online archives” or “internet archives.” I do not take issue with the
record evidence of the meaning of the term “archive” and its relevance to Applicant’s
services. Rather, it is the evidence of the meaning of the prefix “i-” that I find
unpersuasive.
The entry from Computer Desktop Encyclopedia (2013), which is the best
evidence put forward by the Examining Attorney, does not, to my mind, support his
position. Connotation is not denotation. Rather, it is what we call, in the jargon of
trademark law, “suggestiveness.” The entries from NetLingo: The Internet
Dictionary and from http://en.wikipedia.org strike me as highly unreliable. Online
slang dictionaries and other “crowd-sourced” reference works can be valuable in an
analysis under Section 2(e)(1). However, their probative value must be weighed
carefully. To my eye, the NetLingo and Wikipedia entries do not appear to be based
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on rigorous research and they are expressed in language that is equivocal and
imprecise. In other words, I can neither understand what the writers are trying to
say nor tell whether they know what they are talking about. The excerpts from
http://www.luckyregister.com and http://www.translegal.com are, essentially, the
musings of two bloggers (apparently a web consultant and a trademark lawyer) on
the meanings of certain words and expressions. The lack of clarity with which these
two writers express themselves does not inspire confidence; and the question of
whether they have any competence to make their pronouncements raises a serious
problem. If the record contained examples of blogs on which the writers
unselfconsciously used the prefix “i-” in a descriptive manner, I would find such
evidence highly probative. These blogs do not do that.
Finally, I do not agree with the majority’s interpretation of the third-party
registrations on the Supplemental Register of marks that include the prefix “i-.” It
is true that there is information to be gleaned from the face of a registration
certificate. However, the idea that one can use a registration “in the manner of a
dictionary definition” should be applied with the utmost circumspection and only in
very limited circumstances. If a large number of registrations made use of a
particular term in their identifications of goods, I would find it probative of the
descriptive meaning of that term. However, to link information in the registration
to a term contained in the registered mark, in such a way as to show that the term is
descriptive, is a delicate task. I do not agree that the issuance of a registration on
the Supplemental Register can be used against a third party, unrelated to the
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registrant, to demonstrate that the registered mark is merely descriptive. There are
many reasons why applicants settle for registration on the Supplemental Register,
including (a) wholehearted agreement with the examining attorney that the mark is
merely descriptive; and (b) resignation in the face of an unrelenting refusal to
register the mark on the Principal Register.
This application and the record that has developed around it fill me with
suspicion that the term IARCHIVES might be a merely descriptive term that
constitutes an unregistrable component of Applicant’s mark within the meaning of
Section 6. However, that suspicion is not borne out by the evidence of record. I
therefore would require of Applicant no demonstration of acquired distinctiveness;
and I would reverse the Examining Attorney’s requirement of a disclaimer of the
term IARCHIVES and allow the mark to proceed to publication for opposition.