Info.com Ltd.

Trademark Trial and Appeal Board

Oct 11, 2017

No. 86413728 (T.T.A.B. Oct. 11, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: October 11, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Info.com Ltd.
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Serial No. 86413728
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Bruce E. Weir of Bruce E. Weir, Attorney at Law,
for Info.com Ltd.
Sara N. Benjamin, Trademark Examining Attorney, Law Office 110,
Chris Pedersen, Managing Attorney.
_____

Before Cataldo, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Info.com Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark ECONTEXT (in standard characters) for “Computerized market research
services; providing marketing consulting in the field of social media” in International
Class 35.1

1 Application Serial No. 86413728 was filed on October 3, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 86413728
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The Trademark Examining Attorney (“Examining Attorney”), in her first Office
Action, initially refused registration of Applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based upon a likelihood of confusion with the
marks in U.S. Registration Nos. 2745755, 3593956, 3690529 and 4513625, and
required Applicant to indicate if “ECONTEXT” or “E CONTEXT” has any significance
in the marketing or advertising industry.
Applicant responded on June 30, 2015, arguing against the likelihood of confusion
refusal and satisfying the significance inquiry.
On July 22, 2015, the Examining Attorney issued a second office action
additionally refusing registration pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1051(e)(1), on the ground that Applicant’s mark is merely descriptive of
the identified services. In that office action, the Examining Attorney also withdrew
the Section 2(d) refusal with respect to Registration Nos. 2745755, 3593956 and
4513625, but maintained that refusal solely as regards Registration No. 3690529.
Prosecution of the application was then suspended pending the disposition of
Registration No. 3690529, for which registration maintenance documents were due.
The Section 2(d) and 2(e)(1) refusals were maintained and continued.
The application was removed from suspension on August 22, 2016. By Office
Action issued the same day, the Section 2(d) refusal was withdrawn, as Registration
No. 3690529 had been cancelled, and the Section 2(e)(1) refusal was made final.
Applicant appealed and requested reconsideration. The Examining Attorney
denied the request for reconsideration on March 15, 2017, and the appeal
Serial No. 86413728
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subsequently resumed. Both Applicant and the Examining Attorney filed briefs. For
the reasons discussed, we affirm.
Applicable Law
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). The determination of
whether a mark is merely descriptive must be made in relation to the goods or
services for which registration is sought. Chamber of Commerce of the U.S., 102
USPQ2d at 1219. It is not necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services, only that it describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of the
goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987).
Where a mark consists of multiple words or word components, the mere
combination of descriptive words does not necessarily create a nondescriptive word
or phrase. In re Phoseon Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re
Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising
a combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a unique, suggestive, or otherwise nondescriptive
meaning, or if the composite has a bizarre or incongruous meaning as applied to the
Serial No. 86413728
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goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968); In re Shutts, 217 USPQ 363 (TTAB 1983). However, if each component retains
its merely descriptive significance in relation to the goods or services, the combination
results in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71
USPQ2d at 1371.
Last, a mark comprising more than one element must be considered as a whole
and should not be dissected; however, we may consider the significance of each
element separately in the course of evaluating the mark as a whole. See DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756-
57 (Fed. Cir. 2012) (noting that “[t]he Board to be sure, can ascertain the meaning
and weight of each of the components that makes up the mark.”).
Arguments and Evidence
Applicant maintains that its applied-for mark is not merely descriptive of the
identified services because it does not convey any information about them.
The Examining Attorney conversely maintains that the applied-for mark,
ECONTEXT,
merely describes that applicant provides electronic context
market research and marketing consulting and/or that it
provides market research and marketing consulting in the
field of electronic context. That is, ECONTEXT merely
describes that applicant electronically provides market
research and marketing consulting regarding the
particular profile of a targeted consumer, such as location,
places frequented, weather, device type, demographic
information, past purchases, etc. and/or that it provides
market research and marketing consulting regarding the
particular electronic profile of the targeted consumer, such
as physical location, internet locations frequented, device
type, past electronic purchases, etc. In either case, the
Serial No. 86413728
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proposed mark is merely descriptive of the identified
services.2
The Examining Attorney has supported her position with the following evidence:
1. Dictionary Definitions of “e-,” e-formative words, and “context.”
a) “e-” is a prefix that means electronic.3
b) “e-book” is defined as “a book whose contents are in
electronic format.”4
c) “e-cash” is defined as “money available as an electronic
account, used in internet commerce.”5
d) “e-commerce” is defined as “commerce that is transacted
electronically, as over the internet.”6
e) “e-reader” is defined as “a small portable device onto
which the contents of a book in electronic format can be
downloaded and read.”7
f) “e-ticket” is defined as “[a] reservation, as for a seat on
an airplane, for which confirmation is granted
electronically in place of a printed ticket.”8
f) “context” is defined as “the set of circumstances or facts
that surround a particular event, situation.”9

2 11 TTABVUE 5.
3 Office Action Issued July 22, 2015, citing The American Heritage Dictionary, (2015); TSDR
31-32.
4 Denial of Request for Reconsideration issued March 15, 2017; TSDR 32-34.
5 Id.; TSDR 35-37.
6 Id.; TSDR 38-40.
7 Id.; TSDR 41-43.
8 Id.; TSDR 29-31.
9 Request for Reconsideration, filed February 22, 2017, citing Dictionary.com, (2017); pp. 34-
37. Page citations to documents made of record by Applicant are from the .pdf format, as
downloaded from the database.
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2. Internet materials showing that the word CONTEXT in the field of
marketing and advertising describes the particular profile of a mobile or internet
user, such as location, places frequented, weather, device-type, demographic
information, past purchases, etc.10 For example, in a blog entry by Alex Walz titled
“Context Marketing is the New Content Marketing”
(http://www.apptentive.com/blog/), Mr. Walz, in discussing current marketing trends,
states (emphasis supplied):11
We as marketers have a golden opportunity to forge
genuine and reciprocal relationships with our customers by
creating a truly personalized, omni channel experience.
But with this new opportunity comes new hurdles to
traditional marketing. It’s no longer enough to just
have great content; you now need to know how,
when, where, and to whom, you should deliver.
In other words, you need context marketing.
Other Internet materials, include, by way of example:
http://www.kunocrative.com/blog/bid/81569/12
A blog post titled “What is Context Marketing, and Why
Should You Care?,” explains the “essence of context
marketing” is “about knowing what to say and when to say
it to help a potential buyer make a decision. … “‘Getting to
know you, getting to know all about you…’ That’s the most
important step in context marketing.”

10 We have not considered the article from BCCJ (“The magazine of the British Chamber of
Commerce in Japan). While it has a “.com” address, given the focus of the magazine, it is
unclear to what extent it is directed to, or is read by, the American public.
11 Office Action issued July 22, 2015; TSDR 1-3.
12 Id.; TSDR 19-20.
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http://wwwbusiness2community.com/ … -085316913
An article by Rachel Begg, titled “Context Marketing vs.
Content Marketing,” explains: “nothing stays the same for
long in the world of online marketing, and we’re just now
starting to see the ramp-up of the next biggest trend:
context marketing.”
…
“in a nutshell, context marketing is about timing
communication so that it’s most relevant, it’s providing: 1)
the right content; 2) to the right prospect; 3) at just the
right moment.”
http://www.clickz.com/clickz/column/2407578/14
On the website ClickZ, an article titled “Marketing
Buzzword Wars: Personalization Abandoned for Relevancy
and Context” stresses contextual marketing and states, in
part:
Context v. Relevance
Over the last 18 to 24 months, “context” has taken
digital marketing by storm. Marketers are
embracing the term to describe marketing that is “in
the moment” and “hyper-relevant” with a focus on
delivering value to consumers. With all the real-time
data now available to marketers (device-type,
location, weather, inventory, etc.), “relevance” just
doesn’t cut it anymore.
http://www.sitecore.net/learn/blogs/best-practice-blogs/ilse-
lauwens/post/201615
Ilse Lauwens, in the blog post, Rethinking Marketing: The
Age of Context Marketing, explains, in part, “[t]he answer
you’re looking for is not content marketing – it’s content’s

13 Id.; TSDR 13-15.
14 Id.; TSDR 26-27.
15 Final Office Action issued August 22, 2016; TSDR 1-2.
Serial No. 86413728
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wise, more optimized and personalized older brother –
context marketing.”
https://www.theguardian.com/media-network/2016/may/10/16
An article titled “Why context is everything for brands”
discusses contextual factors in marketing.
https://www.digitaldoughnut.com/articles/2017/February/17
An article by Kevin Adema notes: “Sitecore’s recent release
of Context Marketing for Dummies® has yet again
challenged the marketer of today with the resounding
truth that customer-first (Context Marketing) is the only
path toward digital success and meaningful brand
engagement.”
https://www.wearegenuine.com/blog/18
In a blog post captioned “WTF is Context Marketing and
How Do I Get Started?,” “Context Marketing” is defined as
“marketing to a user based on their engagement with your
organization and the context of their past and current
interactions.”
http://www.aesircontextmarketing.com/19
In an article by Anders H. Hansen, titled “Context
Marketing – The Future is Now, Mr. Hansen notes “[t]he
keyword is context.”
We also point out that Applicant, in its June 30, 2015 Response, responded, in
part, to the Examining Attorney’s inquiry into whether the term ECONTEXT has
any significance in the marketing or advertising trade, that “[i]n some uses the
solitary ‘E’ prefix suggests electronically-delivered services, as in ETRADE.COM®.”

16 Id.; TSDR 16-20.
17 Denial of Request for Reconsideration issued March 15, 2017; TSDR 1.
18 Id; TSDR 8, 11.
19 Id.; TSDR 22.
Serial No. 86413728
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Applicant also introduced Internet materials that support a finding that the term
CONTEXT is merely descriptive in relation to its goods. For example, in a blog post
from “innovative Marketing Resources” (http://www.imrcorp.com/innovative-
marketing-blog/bid59267), “context marketing” is defined as “a set of best practices
designed to amplify the value of your content to your prospects and customers. More
specifically it’s about using known qualities of your prospect to either present your
content in a frame of reference so that its presence makes it natural, noteworthy and
usefulor [sic] or to juxtapose your content so that it creates dissonance… .”20
In view of the evidence submitted by the Examining Attorney (as well as
Applicant), we find that the individual components of ECONTEXT have descriptive
significance as used in connection with both the identified computerized market
research services and providing marketing consulting in the field of social media. The
“e-,” a prefix for “electronic,” describes the computerized nature of Applicant’s
services. That is, that Applicant’s services are electronically-delivered. 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”). The record also makes clear that the term CONTEXT is
used in the marketing and advertising industries to refer to marketing strategy

20 Applicant’s Response filed June 30, 2015, pp. 110-115.
Serial No. 86413728
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involving the relevant situational circumstances, such as device-type, location,
weather, inventory, etc., of the consumer to whom the marketer or advertiser has
targeted. No hesitation or thought is needed in appreciating the meaning of these two
terms.
We further find that the record establishes that the designation ECONTEXT, as
a whole, is merely descriptive of the identified services. When ECONTEXT is viewed
in connection with the recited marketing and marketing consulting services recited
in the application, it immediately describes a feature of those services, namely, that
Applicant electronically provides market research and market consulting regarding
the particular profile of a target customer, such as location, places frequented,
weather, device type, demographic information, past purchases, or the like and/or
that Applicant provides market research and market consulting regarding the
particular electronic profile of the prospective customer, such as physical location,
Internet locations frequented, and device type, etc. The combination of terms is not
incongruous, and no additional information is needed for the merely descriptive
significance thereof to be readily apparent to prospective consumers of the services.
See, for example, In re Abcor Dev. Corp., Inc., 588 F.2d 811, 200 USPQ 215 (CCPA)
(Rich, J., concurring) (GASBADGE described as a shortening of the name “gas
monitoring badge”); Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d
892, 149 USPQ 559 (CCPA 1966) (TURBODIESEL held generically descriptive of
engines having exhaust driven turbine super-chargers).
Serial No. 86413728
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Applicant’s arguments to the contrary are simply unavailing. First, Applicant
states that it “is unable to locate any reference that defines ‘ECONTEXT.’” However,
the absence of the term ECONTEXT from the dictionaries Applicant references does
not persuade us that the term is not descriptive; the evidence of record clearly
demonstrates the opposite. See In re Mine Safety Appliances Co., 66 USPQ2d 1694
(TTAB 2002) (WORKMASK found descriptive despite absence of any evidence
composite appeared in dictionaries); In re Energy Products of Idaho, 13 USPQ2d
2049, 2052 (TTAB 1989) (“The absence of [WASTE-TO-ENERGY] from the dictionary
is not, contrary to applicant's argument, ‘persuasive evidence’ that the term is not
merely descriptive of applicant's services.”). See also, Sweats Fashions Inc. v. Pannill
Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1783, 1797 (Fed. Cir. 1987) (The Court
found the absence of the term “sweats” from dictionary and fashion references
insufficient to create genuine issue of fact precluding entry of summary judgment, “in
the face of the strong evidence showing that ‘sweats’ is commonly used as a
descriptive name for fleece garments, particularly sweatshirts and sweatpants.”).
Applicant also points to various definitions of the terms “e,” “context,”
“consulting,” “market,” and “marketing,” “research” and “social media,” arguing that:
When evaluated in light of commonly-accepted definitions
of the terms in Applicant’s identifications of services
ECONTEXT does not with any degree of particularity
convey an immediate idea of any quality, feature, function,
or characteristic of computerized market research services
or of providing marketing consulting in the field of social
media. Neither “e” nor “context” nor ECONTEXT literally
describes any aspect of markets, marketing, research,
marketing research, consulting, marketing consulting or
social media. Even the exercise of mature thought or a
Serial No. 86413728
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multi-stage reasoning process is unlikely to lead a person
unfamiliar with the Applicant’s organization to connect
ECONTEXT with these services.21
As noted, descriptiveness is determined in relation to the services as identified;
that a term has different meanings in different contexts is not controlling. In re
Bright-Crest Ltd., 204 USPQ 591 (TTAB 1979). Further, although consumers may be
unfamiliar with Applicant’s organization and/or Applicant’s services, 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.” DuoProSS Meditech Corp. v. Inviro Medical Devices, 103 USPQ2d at 1757
(quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
Finally, to the extent that Applicant has relied on the principle that when there
is doubt on the issue of whether a mark is merely descriptive, that doubt should be
resolved in favor of the applicant, the reliance is misplaced. In the present case, we
have no doubt that Applicant’s mark is merely descriptive.
After careful consideration of all of the evidence and arguments presented,
including those arguments and evidence not specifically addressed in this decision,
we conclude that when applied to Applicant’s services, the term ECONTEXT, as a
whole, immediately describes, without any kind of multi-step reasoning, a feature of
the identified services, namely that Applicant electronically provides computerized

21 9 TTABVUE 10.
Serial No. 86413728
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market research services and marketing consulting in the field of social media
featuring the particular profile of a target customer.
Decision: The refusal to register Applicant’s mark ECONTEXT is affirmed.